The William Rogers Manufacturing Company vs. ,ja
Simpson, Hall, Miller And Company.
Simpson, Hall, Miller And Company.
Hartford District, Oct. T., 1886. Pakk, C. J., Carpentek, Pardee,
Loomis and Granger, Js.
Loomis and Granger, Js.
nable reputation in the market as a manufacturer of silver-plated
ware. A son of the same name acquired skill under him in the same
manufacture, and since 1864 had had a valuable independent reputa-
tion in the market as a manufacturer of the same goods. In 1878 the
second William Rogers made a contract witli the defendant corpora-
tion by which it was agreed that he should exercise his skill in super-
intending their manufacture of silver-plated ware, and direct as to its
quality and style, and allow his name to be stamped thereon and de-
fend its use; in consideration of which he was to receive a commission
upon sales. The plaintiff corporation had since 1872 been engaged in
the manufacture of silver-plated ware, and used sundry trade-marks, of
which the name "William Rogers" was the principal part, claiming
to own the exclusive right to such stamps by ths agreemant of the first
William Rogers and by long-cont ued use. In a suit brought by the
last-mentioned company against the other for an injunction against
the use of the name " William Rogers " as a trade-mark, it was held:—
1. That the second William Rogers had the right to use his name as the
important part of his trade-mark so long as it was accompanied with devices to distinguish it from the trade-marks of the plaintiffs, and was not used for the purpose of misleading purchasers, although purchasers who took note only of the words " William Rogers," or were not familiar with the stamps of the plaintiffs, were liable to be misled.
2. That under the arrangement by which the goods were manufactured by
the defendant corporation under the superintendence of the second William Rogers, and with an interest on his part in the manufacture and sale, they had a right to use the name of William Rogers in their trade-mark in the same manner that he could have done if he had been the direct manufacturer.
When the second bearer of a name which has become the distinguishing part of a trade-mark used by another manufacturer, uses the same name as a part of his own trade-mark, with proper distinguishing devices, it is not a sufficient reason for enjoining the latter against the use of the name, that the goods of both manufacturers become known in the market by the same name. He is not to be injuriously affected by any use the public may make of a mark which the law allows him to use.
If purchasers who will take note of nothing but the name upon the trademark are misled, and there is consequent loss to either of the parties entitled to use the name, it must be borne as a consequence of the act of taking the name as a trade-mark.
[Argued November 10th, 1886,—decided February 25th, 1887.]
Suit for an injunction against the use of a certain name in a trade-mark, and for an account and damages; brought to the Superior Court in Hartford County. The following facts were found by a committee:—
The plaintiff is a corporation organized in 1872, under the joint-stock laws of this state, located in Hartford, and engaged in the manufacture and sale of spoons, forks and knives. It succeeded to the business of a partnership of the same name which had been formed in 1865.
For one or two years after its organization as a corporation its sales were considerable, amounting to nearly $140,000 in 1873, which was its best year. After that its sales gradually decreased, until, in 1877, they amounted to less than $40,000. From that time forward until the spring of 1879 the business was still smaller, and the goods which purported to be of its manufacture were made, plated, and
a limited extent, on sale in the markets of the country, and were sold to and by dealers in Hartford.
In the year 1879 the management of the William Rogers Manufacturing Company was consolidated with that of the Rogers Cutlery Company, another corporation located in Hartford, and was officered by the managers of the latter company, and from that time the business of the plaintiff has considerably increased.
The goods manufactured by the plaintiff have had a good reputation.
About the year 1847 three brothers, all now deceased, William, Asa H., and Simeon S. Rogers, engaged in the manufacture of electro-silver-plated spoons, forks and knives at Hartford, under the partnership name of Rogers Brothers. Prior to that time William and Simeon had been engaged in the general jewelry and plated-ware business in State street at Hartford, under the firm name of William Rogers & Co. Asa had learned the art of electro-silverplating, and was the only practical plater of the three.
The spoons, forks and knives manufactured by the copartnership were stamped " [Star] Rogers Brothers A 1," or " [Star] Rogers Bros. A 1," and such stamps became well known in the trade as indicating goods manufactured by the firm. In the copartnership thus formed William traveled, selling goods, and when at home exercised a general superintendence over the whole business. Simeon managed the store. Asa did the plating. William Rogers, Jr., was employed as a general assistant.
Electro-silver-plating was then a novel manufacture, and because principally of their integrity in the manufacture, the goods of the Rogers Brothers being found to answer their recommendation as honest goods, the goods of their manufacture acquired a valuable reputation in the market, and as early as 1853 became known as " Rogers goods."
[Facts are then found in much detail with regard to various partnerships or corporations with which some or all the Rogers brothers were connected, and which were authorized to use the name of " Rogers " as a part of their trade-marks, and especially the name of William Rogers, for the purpose of showing how far the plaintiff corporation was entitled to the trade-marks which it was seeking to protect; but as the court does not consider this question in deciding the case, the facts that relate to it are omitted.]
Before the bringing of this suit the following stamps had at various times been put upon goods sent into the market by the copartnership of William Rogers Manufacturing Company, the plaintiff corporation of the same name, and the Rogers Cutlery Company:—" 1847, Wm. Rogers & Son A 1."—"Wm. Rogers & Son."—" 1776 Wm. Rogers & Son."—" (Anchor) Wm. Rogers & Son AA."—" (Anchor) W. R. & Son AA."—"1865 Wm. Rogers Mfg Co. AA."— " Rogers Nickel Silver."—" Rogers Cutlery Company."— " Rogers Silver Plate Company."
The stamp first adopted by the copartnership was " 1847, Wm. Rogers & Son A 1." Having been enjoined against the use of the prefix " 1847," and the suffix " A 1," upon the petition of the Meriden Britannia Company in September, 1872, they for a short time used " Wm. Rogers & Son," and " 1776 Wm. Rogers & Son," and then adopted " (Anchor) Wm. Rogers & Son AA," and " 1865 Wm. Rogers Mfg Co.," which has been sometimes used with and sometimes without the prefix " 1865." " (Anchor) W. R. & Son AA." was used only on small articles from lack of room. "Rogers Cutlery Co." was used by that company and not by the plaintiff, and " Rogers Silver Plate Co." was used only on some job lots.
Wm. Rogers died in 1873; Simeon S. Rogers in 1874; and Asa H. Rogers in 1876.
During the respective lives of these brothers they uniformly claimed that the original stamp of " Rogers Brothers " and the other so-called Rogers stamps used by them, or either of them, or by the companies with which they or either of them were connected, were their personal trademarks, and denoted that the goods to which they were applied were manufactured under their personal superintendence and guaranty of quality.
While the brothers, together or separately, were engaged in such manufacture, either for themselves or for the companies with which they were connected, the stamps so used by them or either of them did represent, and were understood by the public to represent, such superintendence and guaranty; but the stamps continued to be used by the companies after such connection had ceased, under a claim of right so to do, and have come to represent not the personal superintendence and guaranty of the brothers or either of them, but that the goods bearing such stamps are of the same good quality as the goods which were manufactured under the personal superintendence of the brothers, and that the companies using them are the legitimate successors to the brothers in the use of the marks.
The marks are valuable to the parties using them. There was nothing peculiar or mysterious in the art of electrosilver-plating, known to the Rogerses and not known to any skillful silver-plater, and it was their diligence, integrity and skill, and their persistent and undeviating requirement that their trade-marks or names should be placed only upon goods of their standard by the various companies with which they were connected in business, that marks used by them, of which the name " Rogers " formed a part, gave to such goods a valuable reputation.
By reason of the numerous stamps on spoons, forks and knives, containing the word " Rogers," as before stated, and of the efforts of the various concerns who had used such stamps since 1847 to promote the sales of their goods as " Rogers goods," the word " Rogers " had, before the bringing of this suit, become the conspicuous and familiar part of such stamps to a large class of the retail buyers; but jobbers and those retail buyers who are informed in relation to the trade-marks, and the several manufacturers represented by them, readily distinguish between the stamps of the different manufacturers by the words or symbols which such stamps do not possess in common. Many of those retail buyers who buy only by the stamp, look only to the word " Rogers," and are for this reason liable to confound the various stamps, but generally the retail buyers who desire any information on the subject of the maker of the goods rely upon the dealer for such information.
A large proportion of the ultimate purchasers are not familiar with the various marks and their signification, as indicating a particular make, but look merely to see if they are Rogers goods, and usually rely upon the statements of the seller, and are satisfied if they are stamped with the name " Rogers " in some form.
A limited portion of such purchasers are familiar with the various stamps, and such have no difficulty in distinguishing one stamp from another, and are not liable to be deceived if they desire a particular stamp.
In the year 1864 William Rogers, Jr., and William J. Pierce formed a business connection, under which silverplated spoons and forks were furnished to the trade, bearing the stamp of William Rogers, Jr., the arrangement being that Rogers should receive a commission for the right to stamp such goods with his name ; Rogers to sell the goods as the manufacturer, and Pierce not to be personally known in the business.
William Rogers, Jr., is the son of William Rogers, Sr. He had been brought up by his father in the jewelry and plated-ware business of William Rogers & Co., at State street in Hartford, and became associated with his father in 1856, under the firm name of Wm. Rogers & Son, which firm continued until the year 1861. He had also assisted his father generally in the original business of Rogers Brothers, and had always been in familiar association with his father in the latter's business affairs. His name originally was William H. Rogers, but, somewhere about 1856, he changed his name to William Rogers, Jr., for the purpose of being more closely identified with his father, and had become known by that name.
The goods sold under this arrangement with Pierce were plated by him according to the Rogers standard, as agreed by the parties, and were advertised and sold as " Genuine Rogers goods," and equal to the goods of the original Rogers Brothers.
This arrangement continued about a year, and until the formation of the copartnership of the Wm. Rogers Manufacturing Company in 1865.
The Wm. Rogers Manufacturing Company co-partnership continued the use of the trade-marks after William Rogers and William Rogers Jr., who had been members of it, left the firm in March, 1868, and within a short time after obtained a temporary injunction against the Rogerses, father and son, restraining them from using the trade-marks or either of them; from representing that any person other than the Wm. Rogers Manufacturing Company had the right to use them; from interfering with the free use of the trade-marks by the Wm. Rogers Manufacturing Company, and from stating that that company had no right to use them. Wm. Rogers, Jr., was afterwards found in contempt for a violation of this injunction, and fined by the court therefor. The injunction continued in force until after the organization of the plaintiff corporation, when it was withdrawn by consent, without costs.
The Wm. Rogers Manufacturing Company continued its business as a copartnership and the use of the trade-marks until a transfer was made in January, 1872, to the plaintiff corporation. This corporation continued the business at Hartford, at the same place and in the same building, making goods of a good quality, and stamping them with the trade-marks ("Anchor) Wm. Rogers & Son, A A.," and "1865, Wm. Rogers Mfg. Co., AA.," and other stamps to a limited extent, and has claimed the right to use these stamps.
The goods manufactured by them or for them bearing these stamps have been up to the standard of quality known as the Rogers standard. The standard has in fact been raised by the plaintiff and by the other companies making the so-called " Rogers goods."
he goods made and sold by the copartnership and the> plaintiff corporation became familiarly known in the market as " William Rogers goods " and " Hartford goods."
The plaintiff has on signs, circulars, blotters and in advertisements used the name " Wm. Rogers & Son" as a business name, from which it might be naturally inferred by the public that William Rogers or his son William Rogers, Jr., was connected with the manufacture or business, or was the firm conducting the business. The managers of the plaintiff corporation have also stamped job lots of goods with the stamp " Rogers Silver Plate Co.," and registered this stamp as a trade-mark, there being no such company in existence. Such use and register was for the purpose of attempting to control the name and prevent other parties from using it.
The managers of the corporation have also sent into the market since its consolidation with the Rogers Cutlery Company, spoons and forks stamped " Rogers Cutlery Co.," as one of its stamps, the stamp being used on goods on hand at the time of the consolidation of the two companies, which had been manufactured by the Rogers Cutlery Co. It has maintained to the public that its stamps are those of the original, genuine Rogers Brothers.
The defendant is a joint-stock corporation located at Wallingford, in this state, and for some years prior to 1878 had been engaged in the business of making and selling plated ware, both flat and hollow, stamping its flat-ware " Simpson, H. M. & Co.," or with the initials " S. H. M. & Co.," accompanied with devices denoting the quality.
The hollow-ware, stamped with the name of the corporation, sold well and had a high reputation in the market, but its flat-ware, although of good quality and finish, did not find a ready market, and its sales were quite limited.
Prior to 1878 the defendant, through its officers and agents, had made several attempts to connect with itself in some way some man by the name of Rogers, with a view to stamping such name upon its goods. It had a contract in 1867 with William Rogers and William Rogers, Jr., with reference to the use of the stamp " Win. Rogers & Son" upon its hollow-ware, and such was so used to some extent.
The persons who composed its management had negotiations in 1876 with F. Willson Rogers, a younger son of William Rogers, at that time without practical experience in the business, looking to the formation of a company to be called the Rogers Silver Plate Company, under which name an organization was made and published, and that name was stamped upon a small lot of goods, but the negotiations fell through and nothing came of it. In 1872 some negotiations were had with one William W. Rogers, a machinist, with no practical knowledge of the plated ware business, and who was not connected in any way with the William Rogers before referred to.
In 1878 a contract between William Rogers and William Rogers, Jr., and the Meriden Britannia Company having expired, William Rogers having died, and William Rogers, Jr., being then out of business, the latter applied to the defendant for the purpose of making an arrangement with the corporation for the manufacture by it of silver-plated forks, spoons and knives, under his supervision and control, and with his stamp as a trade-mark. Some of the officers of the defendant had endeavored, in 1868, to make some arrangement of the kind with him and his father, but they then entered into the contract with the Meriden Britannia Company before referred to.
The officers of the defendant were at first suspicious that his application was made for the purpose of obtaining better terms in a new contract with the Meriden Britannia Company, but on becoming convinced that his proposition was in good faith, and that his relations with the latter company were fully terminated, they requested him to make a definite proposition, which was done, and the result was the making of a contract between himself and the defendant, of which the following are the parts important to the present case. The defendants are designated in the contract as the
party of the first part and William Rogers as the party of the second part. The contract is dated May 6th, 1878.
" 1. The party of the second part agrees, upon the execution of this contract, to enter into the service of the party 'of the first part, with the general duty of superintending the electroplating, burnishing, buffing and finishing for the market of silver-plated flat-ware goods, manufactured by the party of the first part, of designing and determining the patterns to be used for such ware, of superintending the preparation and printing of all circulars, labels and boxes required for the sale of such ware, and of promoting, by all means in his power, the profitable sale of all goods, the preparation of which for market is placed under his superintendence by this contract.
"2. It is understood that the grade for plating of all silver-plated goods finished under this contract shall be according to the standard adopted by William Rogers, Sr., and also practiced by him and the party of the second part in their business copartnership of William Rogers & Son, and for spoons and forks shall be according to the following schedule :— * * * And the party of the second part agrees faithfully to inspect, oversee and superintend the plating of all goods which are the subject of this contract, and to see that such plating is in all respects so done as to make said goods in that respect equal to the standard aforesaid; and for further security thereof, it is mutually agreed that the said party of the first part shall provide a suitable person, who shall, under oath, weigh such goods before and after plating, and keep a true record of such weight in a book to be kept for that purpose. * * * And said party of the second part shall have free access to all parts of the factory where such goods are being made, plated, finished, or stored.
" 3. Said party of the second part further agrees faithfully to give his attention and supervision to the burnishing, buffing and assorting for the market, of all goods plated in accordance with the foregoing article, * * * and no commission, as is hereinafter provided, shall be paid by the party of the first part on the sales of any goods so prepared for the market not of the first quality, or such as are known as imperfects or seconds. And from all such imperfect goods the name of Rogers shall be erased."
" 5. The said party of the second part further agrees to furnish such patterns as may be needed for the goods which are the subject of the foregoing articles. * * * The styles and patterns used for goods so made shall not be used during this contract for any goods not made under his supervision, as aforesaid, and are to bear his name exclusively.
" 6. Said party of the second part further agrees to give his time, abilities and influence, so far as may be necessary, to establishing and increasing the sale of the goods made under this contract, and that he will not, either for himself or others, directly or indirectly, while this contract is in force, engage in making or selling any article of what is commonly known as flat-ware, or to aid others in the same in any way whatever. * * * The party of the first part agrees not to use, directly or indirectly, any other name of Rogers during the continuance of this contract.
"7. All goods made under the superintendence of the party of the second part as provided by this contract shall be authenticated by the stamp of his name ..hereon, with such accompanying device as he may desire, and shall be so stamped at the factory of the party of the first part in Wallingford, and nowhere else, and the stamps used for that purpose shall be accessible to either party at all business hours. No other stamp shall be used on such goods without the consent of the party of the second part. Nor shall such stamp or device be used on any goods which are not the subject of this contract. Upon the termination of this contract the right to use said stamp shall remain with the party of the second part."
" 9. The party of the first part, on its part, agrees to use all reasonable efforts to effect sales of the goods which are the subject of this contract, and to make the same efforts for that purpose that they do for the sale of hollow ware or other goods manufactured by them. The agents for the
sale of the last-mentioned goods shall solicit orders for the sale of the former, and the party of the first part agrees not to imitate, by label or otherwise, the goods which have been stamped by the party of the second part."
" 11. The party of the first part agrees to pay the party of the second part, as compensation for the services hereinbefore mentioned, a commission on all sales of what is commonly known as flat-ware, bearing his stamp as aforesaid, as follows, to wit:— * * *
12. "All lawsuits against either party, involving the right to use the stamp hereinbefore mentioned, shall be defended at the expense of the party of the second part, and any judgment therein satisfied by him."
14. " This contract is to continue for the term of fifteen years from its date, unless sooner dissolved by mutual consent, with the privilege to the party of the first part of renewing the same for the same or any less period."
William Rogers at once entered into business with the defendant under this contract, and the business has been conducted by the parties in compliance with its terms.
The officers and managers of the defendant corporation were well aware of the value of the name " Rogers " as a stamp on silver-plated ware, if the person whom it represented belonged to the family of either of the Rogers brothers, and had been connected with them, or either of them, in the production of silver-plated goods, and who had a reputation in relation thereto, and was known to the trade; and they entered into the contract for the purpose of availing themselves of the use of the name of William Rogers as a trade-mark upon their flat-ware which should be made under his personal supervision and control, and also of availing themselves of his taste, skill and judgment in relation to the design, style and finish of such goods, and of his knowledge of the trade, and from the belief that the goods so manufactured, stamped and advertised would be well received as genuine Rogers goods.
When the contract was made the business of the plaintiff was at a low ebb, as hereinbefore stated; it was not in the market as a formidable competitor and the defendant had no knowledge that it was in the market, and its conduct in making the contract was not actuated by any motive towards the plaintiff, but its motive was to enable it to compete more successfully in the market with the manufacturers of such goods.
The effect of the use of the Rogers name was soon manifest in the increased and increasing sale of their goods so manufactured and stamped.
The defendant was well equipped for the manufacture of such goods of good style, quality and finish, before the contract with William Rogers was entered into, and no change has been made merely on account of his employment.
The goods made under the contract have been stamped " (Eagle) Wm. Rogers (Star) " in accordance with its provisions and for the purpose therein disclosed, and under the claim that by reason of his superintendence and control of the manufacture it was entitled to have the benefit in the market of the knowledge of the public that its goods were so manufactured, and the advantage in trade of whatever reputation William Rogers had acquired by reason of his connection theretofore with such manufacture and sale of electro-silver-plated goods in his association with the various parties with whom he has been engaged in the manufacture and sale of such goods, and by his long association with his father in his business operations relating to such manufacture.
From his boyhood William Rogers, Jr., has had some connection with the manufacture and selling of electroplated silver-ware, principally spoons, forks and knives, by the various concerns with which his father was associated. Since 1864 down to the time of his connection with the defendant, his name had, by reason of his relation to the business as hereinbefore stated, and the efforts to that end of those with whom he had been associated, been known to the trade as that of the eon of William Rogers, Sr., with whom he had been associated in the manufacture of electrosilver-plated goods, and had in consequence thereof obtaineda valuable reputation, so that-goods stamped with his name, as indicating his supervision and guaranty of their manufacture, had by reason thereof a better selling value in the market.
From 1865 to 1878 he had been almost constantly employed in connection with such manufacture with the Wm. Rogers Manufacturing Company at Hartford, and the Meriden Britannia Company at Meriden, as before stated.
The portrait of William Rogers, Jr., in connection with that of his father, was extensively circulated by both of those companies, by which William Rogers, Jr., was prominently brought to the notice of the trade in connection with his father.
William Rogers, Jr., was not a manufacturer in the sense of making the blanks, or plating or finishing the goods. The value of his name consisted in his knowledge of the business, his skill and judgment in relation to the style and finish of the goods and the requirements of the trade, acquired by his long association with his father in the business, and in the fact that he as well as his father had always insisted that his name should only be used on goods of a certain high standard of quality. It was these characteristics which caused the great reputation of his father.
The blanks of the defendant's goods are made by the Simpson Nickel Silver Company of Wallingford, under contract with the defendant, as the blanks of the Meriden Britannia Company were prepared by Wallace & Sons during the period of William Rogers's connection with that company under the contract of 1868.
This manufacture includes the making, finishing and trimming the blanks. It is supervised and controlled in all its departments by William Rogers, and the work is required to be done to his acceptance, and his requirements have been close and exacting. This supervision also extends to the patterns and dies. The plating and completing of the manufacture, and its preparation for the market, are done at the factory of the defendant, and are under the same charge, supervision and control.
In plating, every piece is counted and weighed, and then plated, and afterwards weighed again to ascertain that the proper amount of silver is on each piece. This weighing is done by a sworn weigher, and the amount is recorded daily in a book for the purpose. Every portion of the work in the plating department, in flat-ware, is under the supervision and charge of William Rogers. In exercising this superintendence and charge he has been faithful, and, in particular, scrupulous to have his goods conform to his own standard of high quality ware, and the reputation of his family name.
The goods thus made and stamped " (Eagle) Wm. Rogers (Star) " are equal in quality to any goods in the market bearing a Rogers stamp.
His services are valuable to the defendant, and the stamp, by reason of its indication of his personal supervision and guaranty, is of special value to it. The arrangement existing between him and the defendant is valuable to him, and it is only through the medium of some such arrangement that he is able to make his special training in the business available to himself.
The stamp " (Eagle) Wm. Rogers (Star)" was not adopted for the purpose of imitating the trade-mark of the plaintiff, but as a new and distinctive trade-mark, indicating his personal supervision and control.
The stamp is put upon the goods in the usual and customary place and manner.
There is no difficulty in distinguishing between the stamp " (Eagle) Wm. Rogers (Star) " and the stamp "1865, Wm. Rogers Mfg. Co., AA.", and " (Anchor) Wm. Rogers & Son AA.", by those dealers or others who will examine the whole stamp and are familiar with the stamps which are used by the plaintiff; but those who regard the word " Rogers " or " Wm. Rogers " only, or who are not familiar with the stamps of the plaintiff, might readily confound them. As before stated, a large class of dealers is familiar with the various stamps used by the different makers of the socalled " Rogers goods," and would readily distinguish the stamp of the defendant from all others, while many small dealers, and a large portion of the ultimate purchasers, are not familiar with the different stamps and their signification, and such dealers and purchasers usually rely upon the representations of the seller, and are satisfied with any stamp bearing the name Rogers, if they are represented to be genuine.
But a dealer or ultimate purchaser who desired goods made by the plaintiff, and was not familiar with its stamp, would readily take goods with the defendant's stamp, from the word " Wm. Rogers " being on the goods.
Purchasers who have a preference for a particular manufacture are as a rule familiar with its stamp, and persons so familiar would not be liable to confound the defendant's stamp with such, if they were observed.
The goods made by the plaintiff and by the copartnership of the same name became known in the market by the general appellation of " Wm. Rogers goods," and no other goods known by that name had ever been in the market except those made and sold by that copartnership and the plaintiff corporation, until the time that goods made by the defendant were put upon the market, since which time these goods have generally become known in the trade as " Wm. Rogers goods."
A purchaser ordering from a dealer simply " Wm. Rogers goods " would be as likely to get goods made by the defendant as those made by the plaintiff, unless he should designate them as Hartford or Wallingford goods, by which they are usually distinguished in the trade. And if the order were thus specific, it might be filled by the goods of either if he was not familiar with the respective stamps, or being familiar neglected to observe them.
The defendant has extensively advertised its goods as " the celebrated William Rogers goods," and as made under the personal supervision and guaranty of William Rogers, and explaining who he is and his former business connections. The plaintiff has followed this by advertisements describing its goods as "the genuine William Rogersgoods."
Prior to these advertisements by the defendant no goods had been advertised as " William Rogers goods." Numerous circulars and advertisements issued by the defendant were annexed to the finding, which cannot be inserted here. The following is one of the briefer ones :—
" Sectional Plated Spoons and Forks.
" [Eagle] William Rogers x. 12.
" Triple Plated upon all points exposed to wear.
" Plated by the method invented by
" William Rogers in 1855,
" Who was the original inventor of
" Sectional Plate.
" Wm. Rogers,
" (Since 1878) Wallingford, Conn., formerly of Hartford and "West Meriden."
The defendant knew that the use of their trade mark and their circulars and advertisements would cause their goods to become known in the market as " William Rogers goods." They were not however intended or calculated to induce the public to believe that the goods designated as " the celebrated William Rogers goods" were manufactured by the plaintiff. The purpose of the circulars and advertisements was to direct public attention to the fact that the manufacture of its goods was controlled by the William Rogers whose name they bear, and to the celebrity of its goods as it is claimed by reason of such control and association with his name.
The defendant knew that the goods which had been made and sold by the plaintiff had become known as " William Rogers goods," and when its advertisements were published it knew that the plaintiffs goods were in the market, and that it was continuing business.
The circular referred to is not misleading to a person familiar with the facts stated therein, and with the fact that William Rogers, Sr., died in 1873; but persons not so familiar might be led by it to suppose that the William Rogers who was the inventor of sectional plate in 1855, was in the
employ of the defendant at the time the circular was published.
Upon these facts the case was reserved for the advice of this court.
F. Chamberlin and 0. H. Platt, with whom were J. P. Platt and H. R. Mills, for the plaintiff.
first. The stamps " (Anchor) Wm. Rogers & Son AA " and " 1865 Wm. Rogers Mfg. Co. AA" are the plaintiff's trade-marks. (1) They were adopted, with the assent of the Rogerses, by the partnership which preceded the plaintiff. (2) They were conveyed by the copartnership, together with its property, business and good will, to the plaintiff corporation. (3) The transfer to the plaintiff corporation was made with the assent of William Rogers, Jr., Wm. Rogers, Sr., being then imbecile and incompetent. (4) And the trade-marks have been in actual use by the plaintiff upon its goods continuously since its organization in 1872 and prior thereto by the partnership from their adoption in 1865. The record is explicit on all these points. Thus it appears that these stamps, adopted in 1866, have been continuously used by the partnership and corporation to the present time—openly, adversely, and under claim of right as their trade-marks. '•
The trade-mark recognized by the common law is generally the growth of a considerable period of use rather than a sudden invention. * * * At common law the exclusive right to it grows out of its use, not its mere adoption." Trade-Mark Cases, 100 U. S. R., 94.
" It is the actual use of the trade-mark, affixed to the merchandise of the manufacturer, and this alone, which can impart to it the element of property. The mere declaration of a person, however long and however extensively published, that he claims property in a word as his trade-mark, cannot even tend to make it his property." Candee v. Deere, 54 111., 439. " The right to use a trade-mark is above all other rights one which depends upon use." Lowell, J., in William Rogers Mfg. Co. v. Rogers $• Spurr Mfg. Co., 11 Fed. Rep., 495. The plaintiff's right to the use of these trade-marks may be regarded as settled by authority. William Rogers Mfg. Co. v. Spurr $• Rogers Mfg. Co., last cited; Meriden Britannia Co. v. Parker, 39 Conn., 460; Rogers $ Brother v. Rogers, 51 id., 121.
Second. The stamp " (Eagle) Wm. Rogers (Star)," as used by the defendant, is an infringement of the plaintiff's trade-marks.
1. An exact imitation or similarity is not necessary. In Meriden Britannia Co. v. Parker it was found that the defendant's trade-mark resembled the plaintiff's " to that degree that it was calculated to deceive unwary purchasers and those who buy such goods hastily and with but little examination of the trade-mark; but purchasers who read the entire trade-mark on the defendant's goods, and who know the petitioner's trade-mark, cannot be deceived, nor can they mistake the respondent's goods for those of the petitioner."
Upon this finding the court by Carpenter, J., remarked:—" The fact that careful buyers, who scrutinize trade-marks closely, are not deceived, does not materially affect the question. It only shows that the injury is less ; not that there is no injury. Another class of purchasers, to whom large quantities are sold, are deceived. Such purchasers, perhaps, will have no reason to complain, as they, if they are injured by the deception, must attribute the injury to their own want of diligence. But the petitioners stand on entirely different ground.
No amount of diligence on their part will guard against the injury; an injunction is their only adequate remedy, and to that we think they are entitled." Meriden Britannia Co. v. Parker, 39 Conn., 460. " The criterion is not the certainty of success in misleading the public, but its probability—or even its possibility." Dttee, J., in Amoskeag Mfg. Co. v. Spear, 2 Saudf., 549, approved by Mr. Upton in his work on trademarks, p. 136, and by Judge Carpenter in Boardman v. Meriden Britannia Co., 35 Conn., 415. To the same effect are—Consolidated Fruit Jar Co. v. Thomas, Cox's Manual, No. 665; Royal Baking Powder Co. v. McQuade, id., No. 671; Wammtta Mills v. Allen, 12 Phila., 535; Q-lenny v. Smith, Vol. Liv.—35
11 Jur., N. S., 964; Leggett v. Sines, 2 Cent. L. J., 110; Avery v. Meikle, 27 U. S. Patent Office Gazette, 1027; Manufacturing Co. v. Trainer^ 101 U. S. R., 65; Landreth v. Lcmdreth, 22 Fed. Rep., 41. In Williams v. Brooks, 50 Conn., 280, the finding was of resemblance " to such a degree that they are liable to deceive careless and unwary purchasers who buy such goods hastily and with little examination; but purchasers who read the entire trademark and label on the defendants' goods cannot be deceived nor mistake the defendants' goods for the plaintiffs." It was not found that the defendants' goods were sold for the plaintiffs, and the defendants were found to have acted in good faith; but the defendants were enjoined. The findings in this case, in respect to similarity of marks, are as follows: " The stamp of the defendant is put upon the goods in the manner customary with other manufacturers;" that is, in the same place and manner as the plaintiffs. " Those who examine the whole stamp and are familiar with the stamps used by the plaintiff, have no difficulty in distinguishing ;" which only means that there are differences which close examination and comparison reveal; but " those who regard the word Rogers or William Rogers only or who are not familiar with the stamp of the plaintiff, might readily confound them. A dealer or ultimate purchaser who desired goods made by the plaintiff, and was not familiar with its stamp, would readily take goods with the defendant's stamp, from the word '
William Rogers' being on the goods. The plaintiffs goods had been, for ten years or more, distinguished by the general appellation of ' William Rogers goods.' Since the defendant's goods, stamped as aforesaid, have been put upon the market, they have become generally known as 'William Rogers goods." "A purchaser ordering from a dealer simply 'William Rogers goods' would be as likely to get goods made by the defendant as those made by the plaintiff, unless he should designate the make, as Hartford or Wallingford goods, by which they are usually distinguished in the trade; and if the order were thus specific it might be filled by the goods of either, if he was not familiar with the respective stamps, or, being familiar, neglected to observe them." We submit that the rinding, upon the point of similarity of marks, is quite beyond that to be found in any of the cases in which the court has granted an injunction.
2. It is not necessary to show that the defendants have acted fraudulently. The law is the same both as to trademarks and trade-names. Singer Mfg. Co. v. Loog, L. R., 8 App. Gas., 15; Sebastian on Trade-marks, 226. This being a suit in equity the law which applies is that stated by Lord Cottenham, in Millington v. Fox, 3 MyLne & Craig, 338, where he says, " I see no reason to believe that there has in this case been a fraudulent use of the plaintiffs' marks. It is positively denied by the answer, and there is no evidence to show that the defendants were even aware of the existence of the plaintiffs as a company manufacturing steel. In short it does not appear to me that there was any fraudulent intention in the use of the marks. That circumstance, however, does not deprive the plaintiffs of their right to the exclusive use of those names." Sebastian in his last edition (1884) says, referring to this case, (p. 9,) " In equity the protection to the manufacturer was carried a stage farther in 1833 by the decision of Lord Cottenham in Millington v. Fox, since which time it has not been necessary to prove an actual fraudulent intention, the remedy being obtainable if the defendants' conduct has been such as to produce the effects of fraud, though he may, in fact, have acted in perfect innocence." Again, at page 11, he says: " It is not necessary that there should be fraud in the sense that the infringer knowingly and willfully makes a fraudulent attempt to appropriate to himself the fruits of another's reputation; if he acts so that custom intended for another is diverted to himself, and that the public buy and pay for one thing while intending to buy and pay for another, so that both vendor and purchaser are injured, there is fraud and the animus of the infringer is unimportant." And again, on page 156, he says:—"But the fraud does not consist in an intention to deceive on the part of the defendant, but in an actual deception, or in the creation of a probability of deception, independently of any fraudulent intention." In reply to a similar objection raised by the defendant in the case of this plaiptiff against Rogers & Spurr Mfg. Co., 11 Fed. R., 495, Judge Lowell says: " I believe it to be true that the Greenfield Rogers did not inquire, nor did the defendants care, whose reputation they were making available; but I am of opinion that any one of those who rightfully use the name may enjoin its interfering use by others." See also Singer Manf. Co. v. Wilson, L. R., 3 App. Gas., 391; Filley v. Fansett, 44 Misso., 173. But we need not rest upon this claim. It is found that " the defendants knew that the goods which had been made and sold by the plaintiff had become known as ' Wm. Rogers goods,' and when said advertisement was published, that their goods were in the market and that they were continuing business," and also that " the defendant knew that the use of said trade-mark and said advertisement would cause their goods to become known in the market as the ' Wm. Rogers goods.' "
" All that courts of justice can do is to say that no trader can adopt a trademark so resembling that of a rival as that ordinary purchasers, purchasing with ordinary caution, are likely to be misled. It would be a mistake, however, to suppose that the resemblance must be such as would deceive persons who should see the two marks placed side by side.
The rule so restricted would be of no practical use. If a purchaser, looking at the article offered him, would naturally be led, from the mark impressed on it, to suppose it to be the production of the rival manufacturer, and would purchase it in that belief, the court considers the use of such a mark to be fraudulent. But I go further. I do not consider the actual physical resemblance of the two marks to be the sole question for consideration. If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device." Seixo v. Provezende, L. R., 1 Ch., 192. See also Lee v. Haley, L. R., 5 Ch., 155; Singer Manf. Co. v. Looy, L. R., 8 App. Cas., 15; S. <7., L. R., 18 Ch. Div., 417; Hendriks v. Montagu, L. R., 17 Ch. Div., 638; Canal Co. v. Clark, 13 Wall., 323; Holmes, Booth ft Haydens \. Holmes, Booth ft Atwood Mfg. Co., 37 Conn., 278; Meriden Britannia Co. v. Parker, 39 id., 450. The defendants will claim that at the time of making the contract with William Rogers their conduct was not actuated by any motive towards the plaintiff; and that they had no knowledge that the plaintiff's goods were in the market, and will ask this court to believe that they were actuated by no improper motive, but solely by the desire to secure, in the manufacture of their goods, the superintendence and alleged skill of this " Rogers."
If the defendants could establish ignorance on their part, we submit that such ignorance would not excuse them. But the finding shows both knowledge and fraudulent action as to the material parts of the case. " Prior to 1878 the defendant, through its officers and agents, had made several attempts to connect with itself in some way some man by the name of 'Rogers,' with a view to stamping such name upon its goods." This language is peculiar and suggestive, and clearly defines the animus of the defendants. The defendants had tried their own name; and while so stamped " their flat-ware, though of good quality and finish, did not find a ready market and its sales were quite limited." They were well aware of the large sale of flat-ware of similar quality bearing a so-called Rogers stamp. They wanted some Rogers, they cared not who, provided the name could be used upon their goods. Having negotiated, without success, in three other directions, they secured the present association. Their motive in making this contract is found to have been " to enable them to compete more successfully in the market with the makers of such goods, that is,' genuine Rogers goods.'" Their first purpose was to secure the name " William Rogers," as a stamp, and it was the use of his name that is found to have
effected the increased and increasing sale of their goods so manufactured and stamped. If in the making of the contract the defendant was not actuated by any motive toward the plaintiff as distinguished from other manufacturers of Rogers goods, yet as one of such manufacturers, of whom there were but three, its injury, though less perhaps in amount, was none the less real. And the motive found to have actuated the defendant as against such manufacturers in general may be relied upon by the plaintiff in this action. But further, the wrong complained of is not the making of the contract with Rogers, but the advertising, stamping and selling of goods which followed. At the time of these acts it is distinctly found that " they knew the plaintiff's goods were in the market, and that they were continuing business."
These later acts at least were done with full knowledge of the plaintiff's rights. We quote the finding on this point: " The defendant knew that the goods which had been made and sold by the plaintiff had become known as 'Wm. Rogers goods,' and when the advertisement was published that, then1 goods were in the market and that they were continuing business." " The defendant knew that the use of said trademark and said advertisement would cause their goods to bebecome known in the market as'Wm. Rogers goods.'"
Nevertheless they continued the use of the stamp and published and circulated the advertisement in its aid, until they had created such confusion that careless and unwary buyers, and those not familiar with the plaintiff's stamps, or who did not examine the whole stamp, would confound them and buy their goods for those made by the plaintiff. The result followed as they knew it would and as they must be held to have intended that it should.
Third.—The defendant's stamp has given to their goods the exact name by which the plaintiffs goods had previously been known, and this fact alone is sufficient reason for the injunction sought. The finding upon this point is full and explicit. " The plaintiff's goods, from the time of the partnership, had been familiarly known as ' Wm. Rogers goods,' and no other goods by that name had ever been in the market until the time that goods made by the defendant were put upon the market, since which time said goods have generally been known in the trade as ' Wm. Rogers goods.' " This case is in this respect like that of Orr, Ewiny & Co. v. Johnson, L. R., 13 Ch. Div., 434, in which the plaintiffs, dealers in yarn which they exported to India, had a ticket containing, among other things, two elephants, which ticket had given the yarn several names by which it was sold and familiarly known, one being the " two elephant goods." The defendants, who had for some years sold yarns bearing a ticket containing, among other tilings, one elephant, began to export similar yarn to the same market, and placed upon it a ticket containing two elephants, but in several other respects different from the ticket of the plaintiffs, and the defendant's elephants themselves were in several particulars unlike those used by the plaintiffs. In an action by the plaintiffs for an injunction to restrain the defendants from infringing their rights it was held—
(1) That if the goods of a trader have acquired in the market a name derived from a part of the trade-mark which he affixes to them, a rival trader is not entitled to use a ticket which is likely to lead to the application of the same name to his goods, even though that name is not the only name by which the goods of the first trader have been known, or though it has always been used in conjunction with some other word.
(2) That though it was not probable that English purchasers or Indian dealers would be deceived, it was not improbable that the ultimate purchasers in India would be, in consequence of defendant's ticket being calculated to obtain the same name of "Bhe ffothe" or "two elephant," as the plaintiffs'.
(3) That it was not necessary to prove any fraudulent intention on the part of the defendants.
(4) That the two elephants forming a material and substantial part of the plaintiffs' trade-mark having been taken by the defendants, the burden was upon them to disprove the probability of deception, and not upon the plaintiffs to prove it." Justice Fry said:—" It appears to me that there is a great deal of evidence, to which I attach weight, to show that these goods are sold largely by name, and that although the first dealers no doubt look at the tickets, yet that the ultimate purchasers and the purchasers from the dealers in Bombay, probably do not look at the tickets, and at any rate are liable to be deceived by the name by which the goods are sold." In another part of his judgment the same justice quotes from the case of Edehten v. Edehten, I DeG., J. & S., 202, in which Lord WestBury observed upon the fact that the goods derived their trade-name from that particular part of the ticket, and says—
" I think therefore that when the defendants did take these two elephants they took that which was a material and substantial part of the plaintiffs' ticket. Now what is the result of that ? It appears to me that the result of tliis is, it throws upon the defendants the burden of proving that their ticket did not deceive the purchaser so that they would believe that the defendants' goods were the plaintiffs' goods," and continues, quoting James, L. J., in Ford v. Foster, L. R., 7 Ch., 623, to the same effect, and O'hagan, L. J , in Singer Machine Mfg. Co. v. Wilson, L. R., 3 App. Cas., 395, "
If one man will use a name, the use of which has been validly appropriated by another, he ought to use it under such circumstances and witli such sufficient precaution that the reasonable probability of error should be avoided, notwithstanding the want of care and caution which is so commonly exhibited in the course of human affairs."
This language of O'HAGAN, L. J., has been quoted with approval by the courts of highest authority both in England and America, and has been lately adopted by this court in Williams v. Brooks, supra. The defendants appealed, and in the Court of Appeal Cotton, L. J., said (13 Ch. Div., 457), " Then we come to the question, is the use of this ticket, on goods exported by the defendants, calculated to lead to their goods being mistaken for those of the plaintiffs, or I may add to lead to their goods being sold under the name under which the plaintiffs' goods had frequently been sold, because that is really the same thimg ? * * * The conclusion at which I have arrived is this, that the defendants either originally adopted that ticket with knowledge of the'facts, from which the intention to mislead must be imputed to them, or at all. events, if that is not so, that they persisted in the desire to continue to use that ticket when they did know the facts from which it was probable that the ticket, if used, would
deceive.
deceive.
Therefore, in my opinion, the judgment of Mr.
Justice Fey is right, and must be affirmed." On subsequent
appeal to the House of Lords, Watson,L. J.,said: "Apart
from all questions ns to bona fides or mala fides of the appel-
lants, I am disposed to hold that the circumstances to which
I adverted afford sufficient ground for an injunction against
the appellants. When a prominent and substantial part of
a long and well-known trade-mark, denoting the manufac-
ture of a particular firm, appears as the prominent and sub-
stantial part of the new trade-mark of a rival, it seems rea-
sonable to anticipate that the goods of the latter may be mis-
taken for and sold as the manufacture of the firm to which
the other trade-mark belongs." L. R., 7 App. Cas., 231. In
the case of Seixo v. Provezende, L. R., 1 Ch., 192, the plain-
tiff and defendant used marks the similarity of which con-
sisted solely in the use of the word Seixo, which was the
name of the plaintiff's vineyard, and by which the defendants
claimed that their vineyard was also called. But Lord
Chancellor Cranworth said that, even assuming that to be
true, it did not justify the defendants in adopting a device
or brand, the probable effect of which was to mislead the
public, and added: " I do not consider actual physical re-
semblance to be the sole question for consideration. If the
goods of a manufacturer have, from the mark or device he
has used, become known in the market by a particular name,
I think that the adoption by a rival trader of any mark which
will cause his goods to bear the same name in the market
may be as much a violation of the rights of that rival as the
actual copy of his device."
Justice Fey is right, and must be affirmed." On subsequent
appeal to the House of Lords, Watson,L. J.,said: "Apart
from all questions ns to bona fides or mala fides of the appel-
lants, I am disposed to hold that the circumstances to which
I adverted afford sufficient ground for an injunction against
the appellants. When a prominent and substantial part of
a long and well-known trade-mark, denoting the manufac-
ture of a particular firm, appears as the prominent and sub-
stantial part of the new trade-mark of a rival, it seems rea-
sonable to anticipate that the goods of the latter may be mis-
taken for and sold as the manufacture of the firm to which
the other trade-mark belongs." L. R., 7 App. Cas., 231. In
the case of Seixo v. Provezende, L. R., 1 Ch., 192, the plain-
tiff and defendant used marks the similarity of which con-
sisted solely in the use of the word Seixo, which was the
name of the plaintiff's vineyard, and by which the defendants
claimed that their vineyard was also called. But Lord
Chancellor Cranworth said that, even assuming that to be
true, it did not justify the defendants in adopting a device
or brand, the probable effect of which was to mislead the
public, and added: " I do not consider actual physical re-
semblance to be the sole question for consideration. If the
goods of a manufacturer have, from the mark or device he
has used, become known in the market by a particular name,
I think that the adoption by a rival trader of any mark which
will cause his goods to bear the same name in the market
may be as much a violation of the rights of that rival as the
actual copy of his device."
Here the defendants, knowing
the plaintiff's goods to have been distinguished for years as " Wm. Rogers goods," and knowing that the stamp proposed to be used would cause their goods to be known in the mar- ket by the same name, contracted with a Wm. Rogers, for the purpose of availing themselves of the name Win. Rogers as a pretended trade-mark upon a portion of their flat ware. Their goods have become known as " Wm. Rogers goods," and " the effect of the use of his name was soon manifest in the increased and increasing sale of their goods."
the plaintiff's goods to have been distinguished for years as " Wm. Rogers goods," and knowing that the stamp proposed to be used would cause their goods to be known in the mar- ket by the same name, contracted with a Wm. Rogers, for the purpose of availing themselves of the name Win. Rogers as a pretended trade-mark upon a portion of their flat ware. Their goods have become known as " Wm. Rogers goods," and " the effect of the use of his name was soon manifest in the increased and increasing sale of their goods."
Fourth. The defendant's infringement is not to be justified or excused by reason of the contract between the defendant and William Rogers. Let us state the defendant's claim under this head as it really is when stripped of its dress and viewed in its nakedness. It is this: The plaintiff alleges and proves that the defendant has so imitated the plaintiffs trade-mark that goods bearing the defendant's simulated stamp will be readily taken by some purchasers who wish to buy the plaintiffs goods.
The defendant replies that he has a right to so imitate the plaintiff's trademark because he has hired William Rogers, the son of his father, who possesses in a greater or less degree the skill of his father, to supervise his, the defendant's, manufacture, and he produces the deceptive imitation only by putting on his, the defendant's, goods the name of the man he has employed to supervise. Or the proposition may be concisely stated thus : If one has a trade-mark of which a personal name forms a part, his rival in business may pirate that trade-mark, provided he employs in his factory a superintendent who happens to possess the same name. The statement of the claim is its sufficient answer.
No attendant circumstances can help out its inherent absurdity. It is the goods of Simpson, Hall, Miller & Co. that bear this deceptive imitation. They are in no sense the goods of William Rogers. He has no interest in them, direct or contingent.
He neither makes nor sells them ; he is an overseer, a supervisor; that and nothing more. If a man uses his own name as a stamp upon his own goods in a legitimate business way with no extrinsic deception it may be the doctrine of this court in Rogers • Bro. v. Rogers that he cannot be enjoined, though his goods are thereby passed as the goods of another; but it does not follow that a manufacturer may put the name of another on his goods and thus pass them as the goods of some one else in the market. Under no imaginable circumstances will a defendant be permitted thus to use another name as a stamp.
The limit in this direction is, certainly reached in the doctrine that a man may use his' own name hi his own business, whatever the result may be, so long as he intends no fraud. There is a shoreless and bottomless pit between that statement and the claim that a man may use another's name in his own business, or that a man may use his own name in another's business, no matter what the results may be. It has sometimes been argued that Meriden Britannia Co. v. Parker, 39 Conn., 450, justifies the theory that there can be a trade-mark the title to Avhich depends upon supervision. No such doctrine is to be found in that or any other case. The reference to supervision is only to answer the defendant's claim that when the Meriden Britannia Company said to the public that the goods stamped " 1847 Rogers Bros. Al " were manufactured by Rogers Bros., it was not such a material misrepresentation as disentitled the plaintiff to relief, because in fact and in truth the Rogers Bros., or some of them, supervised the manufacture of the goods. To assume that supervision may be the foundation of title to a trade-mark, and to attempt to jump from that to the assumption that supervision may be a justification of infringement, requires a wonderful amount of confidence. Trade-marks do not pass by inheritance. If they did, they would not pass to the eldest son alone.
William Rogers inherited no trade-mark from his father. He cannot sell, for he does not own, his father's reputation; for the same reason, if for no other, he can not use or sell his father's name. If he has skill in the business which his father pursued, that skill may justly be the ground of compensation by his employer, but cannot be used by his employer or by himself to deceive others. The question is not whether, there being no other and prior trade-mark containing the words " Wm. Rogers " in the field, Simpson, Hall, Miller & Co. might under its contract with William Rogers put his name on its goods and thus acquire a good trade-mark as against new comers. Probably under the authority of Meriden Britannia Co. v. Parker it could, but the question is whether, there being such prior trade-mark in the field, it can under its contract with William Rogers infringe such prior trade-mark, and that case is authority in point that it cannot. According to that case, though Parker was enjoined at the instance of the Meriden Britannia Company, the latter corporation could have been enjoined at the instance of Rogers & Bro. of Waterbury, prior occupants of the field.
fifth. The right of the plaintiff, as against this defendant, is perfect as to both of its trade-marks; but if William Rogers, Jr., were himself defendant, he would, upon the facts found, be estopped to deny the exclusive right of the plaintiff to the trade-mark " Wm. Rogers Mfg. Co." This was the name of the original copartnership, taken by contract with Wm. Rogers, Sr., and has been used by the copartnership and the plaintiff, without question or objection from either father or son, ever since its adoption in 1867. It is found that Rogers has several times complained of the use by the plaintiff of the stamp Wm. Rogers & Son, claiming it to be his personal mark, but no complaint is found because of the use of " Wm. Rogers Mfg. Co." This is the trade-mark which gave name to the goods as " Wm. Rogers goods." Had they been called after the other they would have been "Wm. Rogers & Son" goods. Can there be upon the facts any doubt that William Rogers himself would, if personally defendant, be estopped to deny the exclusive right of the plaintiffs to the use of this mark ?
0. R. Ingersoll and O. E. Mitchell, for the defendant.
1. William Rogers, as a manufacturer of plated-ware, would have the right to use his own name as his trade-mark, or as a part of his trade-mark, whatever use had been made of the same name by any other manufacturer, and it is not necessary for us to deny the right of the plaintiff to the use of the trade-mark which it claims. The fact that two men bearing the same name may each have a high and valuable reputation in the same art, and may each give his name to the goods of his production, and that more or less inconvenience may result from the identity of such names, is no reason for requiring one of them to withdraw from the business of such art or trade, or to give up the valuable' reputation to which he is entitled, by adopting some other name by which he will lose his personal significance. And this where both the men are in full life and active business. With much less reason can this plaintiff avail itself of the reputation of the William Rogers, the father, who died in 1873, to prevent William Rogers, the son, enjoying the reputation which he has largely made for himself since the death of his father. In any case, the inconvenience resulting from the mere identity of business names, if it be proved (which in the present case we deny), is damnum absque injuria. And this, too, has been settled by this court in Rogers & Brother v. Rogers, 53 Conn., 121. It also necessarily resulted from the decision of this court in Meriden Britannia Co, v. Parker, 39 Conn., 450, where the stamps of William, Asa and Simeon Rogers, individually and collectively, were held to be rightfully used, although concurrently, and under circumstances causing them easily to be confounded one with another.
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