Bank of Tomah v. Warren

Cassoday, C. J. Prior to the failure, the banking business had been conducted at Tomah under the name and style of the “ Bank of Tomah ” for more than fifteen years. During that time Thayer, the owner, or principal owner, of the bank, did not live at Tomah, but at Sparta. Nevertheless that bank had, during that time, done a large and profitable banking business, and had a large patronage, and numerous customers, residing not only in and about Tomah, but also at more or less distance, conducting their business by correspondence. Such custom or patronage, arising from the establishment and long continuance of the business, and the expectation or probability of its continuance at the same place, constituted, in legal language, the good will of the business. There can be no question but that such good will included benefits and advantages to the proprietor, in addition to the specific value of the property considered by itself, and hence constituted a species of asset or property. In other words, the bank, with its equipments, at the time of the failure, was of far more value for the purpose of continuing the banking business, by reason of such good will, than it would have been had the bank just then been started. These views are abundantly supported by authority. Kennedy v. Lee, 3 Mer. 452; Churton v. Douglas, Johns. Eng. Ch. 174; Hall v. Barrows, 4 De Gex, J. & S. 150; Ginesi v. Cooper & Co. 14 Ch. Div. 596; Leggott v. Barrett, 15 Ch. Div. 306; Angier v. Webber, 14 Allen, 211; Glen & Hall Mfg. Co. v. Hall, 61 N. Y. 226; Chittenden v. Witbeck, 50 Mich. 401; Menendez v. Holt, 128 U. S. 514; Bradbury v. Dickens, 27 Beav. 53. Such good will was so secured [160] under and in the name of the “Bank of Tomah.” The question recurs whether such goodwill and trade or business name passed from Thayer to Williams by the clause in the assignment quoted in the statement, and passed from Williams, as such assignee, to the plaintiff, by conveying, selling, and transferring to it “ the building, fixtures, good will, and the name of the Bank of Tomah,” as theretofore conducted by Thayer in Tomah, thereby “ intending to sell and convey all the rights and privileges appertaining to said banking business enjoyed by ” Thayer “ while conducting said •banking business in the city of Tomah.” This court has repeatedly sanctioned the right of such transfer in connection with the establishment of a trading or manufacturing business. Washburn v. Dosch, 68 Wis. 436; Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 561, 562, and cases cited. That case was cited approvingly in Richmond Nervine Co. v. Richmond, 159 U. S. 293, 302. In Churton v. Douglas, supra, it was held that upon a sale of the good will of a business the vendor is at liberty to set up a similar business, “but he is not at liberty to do so under the old style or firm, although his name should be the only one appearing in that firm; nor is he at liberty in any other manner to hold out that he is carrying on business in continuation of or in succession to the business carried on by the late firm.” In Ginesi v. Cooper & Co., supra, it was held that “ a trader who has sold his business and good will to another for value must abstain not only from soliciting orders from, but also from dealing with, the old customers.” To the same effect is Trego v. Hunt [1896], App. Cas. 7, in the House of Lords. In Menendez v. Holt, supra, it was held that the retiring member of the firm had relinquished all right to the good will of the business of the other members of the firm, who continued to do business at the old place; and that the trade mark or name was a part of the good will of the business. In Smith v. Everett, 27 Beav. 446, it was held [161] that the good will of a partnership banking business conducted under the name of the “ New Sarum Bank ” did not, on the death of one partner, survive beneficially to the others; that, when it has any value, a due proportion thereof belongs to the estate of the deceased partner, but that the surviving partner still had the right to carry on the same business at the same place, but upon his sale of the business the estate of the deceased was entitled to a share of so muck of the purchase price as was attributable to the good will. In Mellersh v. Keen, 27 Beav. 236, S. C. 28 Beav. 453, a firm had for some time been conducting a banking business under the name of “Mellersh & Keen’s Bank.” Keen became a lunatic, and the plaintiff filed a bill for the dissolution of the firm, etc.; and it was held that the plaintiff, having obtained the exclusive possession and benefit of the good will, was accountable therefor; that in ascertaining its value the court considered what it would have produced if sold in the most advantageous manner, and at the proper period of time; and assessed the value of the good will of the banking business at one year’s average net profits. In Thynne v. Shove, 45 Ch. Div. 577, the plaintiff sold his business of a banker, conducted under the name of “A. Thynne, Banker,” and the good will thereof, and his stock in trade, including trade cards bearing the name of “A. Thynne, Banker,” to the defendant. The deed of the premises contained an assignment of “ all the beneficial interest and good will of the said Arthur Thynne in the said trade or business,” but contained no express assignment of the right to use the plaintiff’s name. The defendant used up the cards on hand, and printed others just like them. The plaintiff brought suit to restrain the defendant from printing or publishing such cards, or otherwise trading in his name; and the court held that by virtue of the assignment to him of the good will of the business the defendant was entitled to use the name of the plaintiff for the purpose of [162] showing that the business was formerly carried on by the plaintiff,' provided he did so in a way not to expose the plaintiff to liability. See, also, Stone v. Carlan, Cox, Trade-Mark Cas. 115; Marsh v. Billings, Cox, Trade-Mark Cas. 118; S. C. 7 Cush. 322; S. C. 54 Am. Dec. 723; Woodward v. Lazar, 21 Cal. 448, in which the use of names of hotels was protected. From the authorities cited it is very manifest that the good will and business name of “ Bank of Tomah ” was. assignable, and passed as assets and property to the plaintiff by the assignments and transfers mentioned. The mere intermission in the business of the bank, from the time of the failure, July 27,1893, to March 6,1894, when the plaintiff, under such assignments and transfers, resumed the same, did not operate as an abandonment of such good will or trade-name. In Monson & Co. v. Boehm, 26 Ch. Div. 398, it was held that the mere discontinuance of the business for lack of demand, though coupled with non-registration and non-assertion of any right for the period of five-years, did not operate as an abandonment of a trade-mark; that, to so operate, there must be evidence of a distinct intention to abandon. In the case at bar it appears that only eight days after Thayer made his assignment for the benefit, of creditors the defendants, who had, for more than four-years and a half, been doing business under the name and: style of “ J. IT. Warren & Son, Bankers,” changed the name and style of the bank to"“ J. H. Warren & Son’s Bank, of Tomah.” This was manifestly done to secure the former custom and patronage of M. A. Thayer’s Bank of Tomah, as far as practicable. The unseemly controversy over the mail matter which came to the post office at Tomah addressed to “Bank of Tomah” shows that the defendants, were successful in accomplishing their purpose, at least to. some extent. It is well settled that the wrongful use of a trade-mark or trade-name may be enjoined without proof that anyone had [163] actually been deceived. Jay v. Ladler, 40 Ch. Div. 649. Other cases might be cited, but it is unnecessary. By the Court.— The judgment of the circuit court is affirmed.