Macwilliam v. President Suspender Co.

Mr. Justice Van Orsdel delivered the opinion of the Court: Nothing seems to be better established in the law of trademarks than that where the owner of a trademark grants the right to another, either by sale or license, to use the mark on the goods with Avhich its use is connected and abandons its use himself, he cannot afterwards either deprive his assignee of the right to its Tise or set up an adverse use. By use in connection with the business the assignee acquires the title abandoned by the assignor, and the title is of that exclusive character which is entitled to protection even against such assignor. Buffalo Rubber Mfg. Co. v. Batavia Rubber Co. 90 Misc. 418, 153 N. Y. Supp. 779; Huff v. Wallace, 88 N. J. L. 452, 97 Atl. 45. In the Batavia Rubber Case, the plaintiff manufactured tires and called them “Security Tread.” It gave defendant a license to make tires and call them “Security” tires. Upon failure of defendant to pay the royalty as agreed, plaintiff attempted to en [48] join the use of the word “Security.” The court, denying relief, said: “The plaintiff, when it permitted or gave to the defendant the privilege to use the word in connection with tires made by it.virtually abandoned the right to claim that the word ‘Security’ in any sense indicated tires manufactured by the plaintiff. It waived and abandoned the use of the word as indicative of origin or ownership.” It is likewise well settled that the conveyance of a business with its good will, either by sale or license, carries with it a trademark used in connection therewith, whether expressly mentioned in the instrument or not. Merry v. Hoopes, 111 N. Y. 415, 18 N. E. 714; Corbett Bros. Co. v. Reinhardt-Meding Co. 77 N. J. Eq. 7, 76 Atl. 243; Myers v. Kalamazoo Buggy Co. 54 Mich. 215, 52 Am. Rep. 811, 19 N. W. 961, 20 N. W. 545; Allegretti v. Allegretti Chocolate Cream Co. 177 Ill. 129, 52 N. E. 487. In the Corbett Case, where by a sale of the entire assets of the partnership everything pertaining to the business was conveyed, the New Jersey court said: “The transfers were effective to convey to the complainant the trademarks of the partnership, and if the color numbers are part of the trademarks the use of them by defendant company is an infringement of complainant’s property rights derived under the two bills of sale.” In the Allegretti Case the court said: “The transfer of the property and effects of a business carries with it the exclusive right to use such trademarks or tradenames as have been used in such business. Snyder Mfg. Co. v. Snyder, 54 Ohio St. 86, 31 L.R.A. 657, 43 N. E. 325; Williams v. Farrand, 88 Mich. 473, 14 L.R.A. 161, 50 N. W. 446; Fish Bros. Wagon Co. v. La Belle Wagon Works (Fish Bros. Wagon Co. v. Fish) 82 Wis. 546, 16 L.R.A. 453, 33 Am. St. Rep. 72, 52 N. W. 595; Merry v. Hoopes, 111 N. Y. 415, 18 N. E. 714; Feder v. Benkert, 18 C. C. A. 549, 44 U. S. App. 99, 70 Fed. 613.” Inasmuch as appellant had no right to use the mark, having parted with that right at the date when he applied for the earlier registration in 1899, and had no such right when he filed the present application, it follows that the opposition must be sustained. A trademark right depends upon use. Appellant not [49] only ceased to use the mark, but parted with the business with “which its use was connected. Title to the mark could not exist apart from the business, and the contract contained no provision by which appellant could recover the business, and without the business no right existed in the mark. The license extended during the life of the patent. The iimmtion then became public, and appellee could continue the business which it acquired and the use of the mark in connection therewith. Appellant, when he conveyed the business to which the mark belonged, conveyed with it the right to use the mark, and when appellee’s right to continue the business became absolute with the expiration of the patent, it had acquired a title to the use of the mark of which it could not be devested by appellant after an abandonment of actual use by him for almost eighteen years. Appellant’s title was not such that he could convey it to appellee, abandon the use of tire mark, and, after this long lapse of time, regain the use in derogation of the right of appellee company. All the title appellant ever had in the mark was a right to use it in the particular business to which it belonged. Registration confers no higher title. As was said by the court in Thomas G. Carroll & Son Co. v. McIlvaine & Baldwin, 171 Fed. 125: “The OAvner of a trademark has no estate in the trademark as such, nor does registration confer upon him any monopoly. His position bears no resemblance to that of a patentee. He is entitled to legal protection for his trademark only because bv granting the same the courts protect the business designated or indicated to the public mind by the trademark.” It may well be that had appellee company defaulted in its contract, and the business had reverted to appellant before the expiration of the patent and the contract, the right to the use of the mark would also have reverted: but this did not occur, and appellee, succeeding to the right with the expiration of the patent to continue the manufacture of the goods, cannot be deprived of the mark which it acquired from appellant in the fulfilment of its contract in good faith. It is entitled to use it so long as it continues in the business to Avhich the mark belongs. The decision of the Commissioner of Patents is affirmed, [50] and the clerk is directed to certify these proceedings as by' law required. Affirmed. Mr. Justice Gould, of the Supreme Court of the District of Columbia, sat with the Court in the hearing and determination of this appeal, in the place of Mr. Chief Justice Shepard.