8 Paige, 75; Tallcot v. Moore, 6 Hun, 106; Stephens v. DeConto, 4 Abb.
Pr. N. S. 47; Matsell v. Flanagan, 2 Abb. Pr. N. S. 459; Publishing
Co. V. Dobinson, 82 Fed. Rep. 56; Richardson & Boynton Co. v. Rich-
ardson & Morgan Co., 8 N. Y. Supp. 53; Farmers' Loan & Trust Co.
V. Farmers' Loan & Trust Co., 1 N. Y. Supp. 44; Borthwickv. Even-
ing Post, L. R. 37 Ch. D. 449; Estes v. Leslie (2), 29 Fed. Rep. 91;
Estes V. Leslie (1), 27 Fed. Rep. 22; Estes v. Worthington, 31 Fed.
Rep. 154.
CHAPTER V.
THE LOSS OF THE RIGHT TO A TRADE-MARK'S USE.
§ 67. Laches. — There is no laches where a complain-
ant is only waiting to get a sufficient quantity of evidence
to secure a successful prosecution of the infringer,^ and
of course none exists where the complainant has no knowl-
edge of the fact of infringement; ^ and it has been dis-
tinctly held by the federal supreme court that an injunc-
tion will not generally be refused on the ground of delay
alone.^ Following that decision, it was said by Judge
Nixon, in the United States circuit court in the district of
New Jersey : ' ' There has been large discussion of the ques-
tion how far laches, in stopping the infringement of a
trade-mark, will deprive a complainant of the benefits
of a preliminary injunction. But that discussion has
been put to rest, so far as this court is concerned, by the
recent decision of the supreme court in the case of McLean
V. Fleming,^ where it was held that acquiescence of long
standing was no bar to an injunction, although it pre-
cluded the party acquiescing from any right to an account
for past profits."^
The rule has always been, however, that laches on the
part of the owner of a trade-mark would be a bar to his
application for a preliminary injunction. Judge Wallace
stated the rule as follows: "Laches in prosecuting in-
fringers has always been recognized as a sufficient reason
for denying a preliminary injunction; sometimes, appar-
iCave v: Myers, Seton (4th ed.), 238; Lee v. Haley, 22 L. T. N. S. 251.
2 Re Farina, 27 W. R. 456; Seb. 642; Weldon v. Dick, L. R. 10
Ch. D. 247; 39 L. T. N. S. 467; Seb. 638; Taylor v. Carpenter (1), 3
Story, 458; Cox, 14; Seb. 78; Taylor v. Carpenter (2), 2 Wood.
& M. 1; Cox, 32; 9 L. T. 514; Gilka v. Mihalovitch, 50 Fed. Rep. 427.
3 McLean v. Fleming, 96 U. S. 245.
* Supra.
^Consolidated Fruit Jar Co. v. Thomas, Cox, 665. And see La
Republique Francaise v. Schultz, 102 Fed. Rep. 153.
122
§§58,59] LOSS OF RIGHT TO TRADE-MARK'S USE. 123
ently, by way of discipline to a complainant who has
manifested reluctance to burden himself with the expense
and vexation of a lawsuit, and delayed leg'al proceeding's
until his patience was exhausted. When delay of the
owner of a patent or trade-mark to prosecute infringers
has been of a tendency to mislead the public or the de-
fendant sought to be enjoined into a false security, and
a sudden injunction would result injuriously, it ought
not to be granted summarily, but the complainant should
be left to his relief at final hearing,"^
§ 68. Laches and acquiescence distinguished. —
"Laches" and "acquiescence" are terms frequently used
synonymously, or at least without due reg"ard to their
respective meanings. ' ' Laches " imports a merely passive,
while "acquiescence" implies an active assent. ^ The
supreme court of California has said, " 'Laches' would
strictly seem to imply neglect to do that which ought to
have been done; 'acquiescence' a resting satisfied with
or submission to an existing state of things."^
"Acquiescence — that is, assent — is tantamount to an
agreement."'* The supreme court of the United States,
by Mr. Justice Swayne, has said: "Acquiescence and
waiver are always questions of fact. There can be
neither without knowledge. The terms import this foun-
dation for such action. One cannot waive or acquiesce
in a wrong- while ignorant that it has been committed.
Current suspicion and rumor are not enough. There must
be knowledge of facts which will enable the party to
take effectual action."'^
§59. Acquiescence. — "The consent of a manufac-
turer to the use or imitation of his trade-mark by another
maj?-, perhaps, be justly inferred from his knowledge and
silence; but such a consent, whether expressed or im-
1 Estes V. Worthington, 22 Fed. Rep. 822.
-Wood on Limitations, sec. 62.
•'"Lux V. Haggin, 69 Cal. 255-269.
^Matthews v. Murchison, 17 Fed. Rep. 760-766.
•■'Pence v. Langdon, 99 U. S. 578-581. See also Allen v. McKeen,
1 Sumn. 276-314; Evans v. Smallcombe, L. R. 3 H. L. 249; Ramsden
V. Dyson, L. R. 1 H. L. 129; Reed v. West, 47 Tex. 240.
124 LAW OF UNFAIR TRADE. [§59
plied, when purely gratuitous, may certainly be with-
drawn; and when implied, it lasts no longer than the
silence from which it springs. It is, in reality, no more
than a revocable license. The existence of the fact may
be a proper subject of inquiry in taking an account of
profits if such an account shall hereafter be decreed;
but even the admission of the fact would furnish no
reason for refusing an injunction."^ This dictum of
Judge Duer in Amoskeag Mfg. Co. v. Spear is so compre-
hensive as to warrant its extended quotation above given.
While it was held by Vice-Chancellor Wood that a plain-
tiff's acquiescence in the defendant's use of his mark for
two years after the plaintiff had seen it publicly exhibited
would disentitle him to relief ,2 an injunction was granted
in a case where a dissenting opinion shows that the es-
sential feature of the mark had been used by others than
plaintiff with his knowledge for more than twenty years. ^
It has been held in a federal circuit court that acquies-
cence for a time equal to that prescribed in the statute
of limitations must be shown.* Acquiescence cannot be
inferred, and it is revocable if it could be.^
"In England the rule is stringent in trade-mark cases
that lack of diligence in suing deprives the complainant
in equity of the right either to an injunction or an ac-
count. Our courts are more liberal in this respect. A
long lapse of time will not deprive the owner of a trade-
mark of an injunction against an infringer, but a reason-
lAmoskeag- Mfg. Co. v. Spear, 2 Sandf. S. C. 599; Cox, 87. The
withdrawal of gratuitous permission to use one's name may be made
at the pleasure of the party granting such permission. McCardel v.
Peck, 28 How. Pr. 120.
2Beard v. Turner, 13 L. T. R. N. S. 747; Cox, 717.
SQillott V. Esterbrook, 47 Barb. 455; Cox, 340. Dissent of Ingra-
ham, J.
^Taylor v. Carpenter (2), 2 Wood. & M.l; Cox, 32. But "laches for
even less than the statutory period of limitations, aided by other cir-
cumstances, will bar a right." Acheson, J., in Prince's Met.
Paint Co. V. Prince Mfg. Co., 57 Fed. Rep. 938-944, where the plaintiff
was held to be estopped by eight years' acquiescence.
•''Gillottv. Esterbrook, supra; Amoskeag Mfg. Co. v. Spear, su^jra;
Christy v. Murphy, 12 How. Pr. 77; Cox, 164; Seb. 137; Menendez v.
Holt, 128 U. S. 514.
§60] LOSS OF RIGHT TO TRADE-MARK'S USE. 125
able dilij^ence is required of a complainant in assertinjj
his rights, if he would hold a wrong-doer to an account
for profits and damages. This rule, however, applies
only to those cases where there has been an acquiescence
after a knowledge of the infringement is brought home
to the complainant."^
§ 60. Abandonment. — The consideration of laches and
acquiescence leads us naturally to the subject of aban-
donment. The first form of abandonment is by disuse of
the mark. "That the right to use a trade-mark ma}'- be
lost by abandonment or disuse is too clear to need argu-
ment or the support of authorit3^"'^ But the length of
time during which the mark is not used is immaterial
except when it is such as, taken in connection with all
the circumstances, will show the intention of its owner
to abandon it. "A man who has a trade-mark may prop-
erly have regard to the state of the market and the de-
mand for the goods; it would be absurd to suppose he
lost his trade-mark by not putting more goods on the
market when it was glutted."-^ Registration w^as refused
in England where the applicant's mark "EmoUio"' had
not been used b}'- him for eleven years, and his applica-
tion was opposed by one who had, in the meantime, reg-
istered the word "Emolline " as a trade-mark for articles
similar to those upon which the applicant intended to
affix his mark (perfumery).-* Before the courts will de-
clare an abandonment by disuse there must be satisfac-
tory proof of intention of abandonment. It has been
suggested by Chitty, J., that such intention will be gath-
ered from the owner's acts in breaking up the moulds by
which the mark is made, and taking the trade-marked
article from his price lists. '^
^Nixon, J., in Sawyer v. Kellogg-, 9 Fed. Rep. 601.
2 Hughes, J., in Blackwell v. Dibrell, 3 Hughes, 151; 14 Off. Gaz.
633; Price & Steuart, 39; Seb. 590; Laverne v. Hooper, Ind. L. R.
8 Mad. 149; Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376.
•''Chitty, J., in Monson v. Boehm, L. R. 26 Ch. D. 398-406; Cart-
mell, 233.
^Re Grossmith, 6 R. P. C. 180; 60 L. T. N. S. 612; Cartraell, 137.
5 Monson v. Boehm, L. R. 26 Ch. D. 398-405; Cartmell, 233.
126 LAW OF UNFAIR TRADE. [§60
It must be borne in mind, in this connection, that the
defense of abandonment is not favored by the courts.
One judge has said, ''there is something very abhorrent
in allowing- such a defense to a wrong, "^ although as a
matter of course a trade-mark once abandoned may be
adopted by another for the same class of merchandise.^
There must be clear proof of the fact of abandonment,^
and it ought to be clearly shown that any other person
is adopting the same mark fairly and honestly, and not
in an attempt to filch from its original owner the reputa-
tion he has obtained for it.'' What act or acts will con-
stitute an abandonment must be determined by the facts
in each particular case. One English decision held that
a dismissal of a bill for injunction was an abandonment
of the trade-mark sought to be protected by the bill.^
The abandonment of names used in connection with
particular premises where selling or manufacturing is
conducted has led to some apparent conflicts of opinion
among the courts. Careful analysis of the facts will
show that there is some semblance of harmony in the
rulings. Whether a removal from the premises will con-
stitute an abandonment of the use of the name depends
on whether the name indicates the building itself, or
merely the business conducted therein. Thus, "Booth's
Theatre " designated the theatre and not the actor, and
upon its sale by Edwin Booth he could not restrain his
vendee from the use of the name, as Messrs. Jarrett &
Palmer had fully advertised the fact that they were lessees
and managers, and no question of fraud could be raised.^
As stated by Wallace, J., in Atlantic Milling Co. v. Robin-
son: "The right to the exclusive use of a word or symbol
as a trade-mark is inseparable from the right to make
and sell the commodity which it has been appropriated
1 Woodbury, J., in Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32.
^Holt V. Menendez, 128 U. S. 514; Royal Baking Powder Co. v.
Raymond, 70 Fed. Rep. 376-382.
•-'Sohl V. Geisendorf, 1 Wilson (Ind.), 60; Seb. 367.
'' Royal Baking- Powder Co. v. Raymond, 70 Fed. Rep. 376-382.
â– 'Browne v. Freeman, 12 W. R. 305; 4 N. R. 476.
SBooth V. Jarrett, 52 How. Pr. 169.
§60] LOSS OF RIGHT TO TRADE-MARK'S USE. 127
to designate as the production or article of the propri-
etor. It may be abandoned if the business of the pro-
prietor is abandoned. It may become identified with the
place or establishment where the article is manufactured
or sold, to which it has been applied, so as to designate
and characterize the article as the production of that
place or establishment, rather than of the proprietor.
A trade-mark of this description is of no value to the
original proprietor because he could not use it without
deception, and therefore would not be protected in its
exclusive enjoyment. Such a trade-mark would seem to
be an incident to the business of the place or establish-
ment to which it owes its origin, and without which it
can have no independent existence. It should be deemed
to pass with a transfer of the business because such an
implication is consistent with the character of the trans-
action and the presumable intention of the parties."^
So that the use of the name "Stillman" to indicate the
cloth product of the Stillman Mills; -^ "Old Oscar Pepper"
to indicate the product of the distillery of that name;"
"Osborne House" to designate a hotel first owned by
Osborne * * ' Towner Palace, " designating a building, having
a tower, where a clothing business was conducted,^ are
all held to be indicative of the premises and abandoned
by the owner of the name who sells the premises or re-
moves therefrom. It follows that a mere arbitrary name
not designating the locality or building in which a busi-
ness is transacted will survive a change in the location
of the business.*'
J Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 218; citing- Dixon
Crucible Co. v. Guggenheim, 3 Am. L. T. 228; Hudson v. Osborne,
39 L. J. Ch. N. S. 79; Shipwright v. Clements, 19 W. R. 599. See
also Hall v. Barrows, 4 DeG. J. & S. 157; Glen & Hall Mfg. Co. v.
Hall, 61 N. Y. 227-234; Kidd v. Johnson, 100 U. S. 617; Leather
Cloth Co. V. American Leather Cloth Co., 11 Jur. N. S. 513; Ains-
worth V. Walmesley, 44 L. J. 555.
-Carmichael v. Latimer, 11 R. L 395.
8 Pepper v. Labrot, 8 Fed. Rep. 29.
^Hudson V. Osborne, 39 L. J. Ch. N. S. 79.
^Armstrong v. Kleinhaus, 82 Ky. 304.
''Dewitt V. Mathey (Ky.), 35 S. W. Rep. 1113 (not officially reported).
128 LAW OF UNFAIR TRADE. [ § 60
The leng-th of time during which a trade-mark is not
used is, as we have seen, merely a circumstance to be
considered with all the other facts in the case in deter-
mining whether there was an intention to abandon its
use. Thus, defendants have been restrained from using
a mark that has lain in disuse for periods of one year,^
three years, "^ nine years,^ ten years,^ and even twenty
years. ^ The vital question is the intention of the owner
of the mark, and the burden of establishing abandonment
lies upon the party who affirms it.^
There may be an involuntary abandonment of a trade-
mark through the fact that, once distinctive, it has
ceased to indicate the merchandise of the owner of the
mark and has become publici Juris because it indicates
only a peculiar product or method of manufacture. This
again arises from the peculiar circumstances of each
case. "What is the test by which a decision is to be
arrived at, whether a word which was originally a trade-
mark has become puNici juris? I think the test must be,
whether the use of it by other persons is still calculated
to deceive the public; whether it may still have the effect
of inducing the public to buy goods not made by the orig-
inal owner of the trade-mark as if they were his goods.
If the mark has come to be so public and in such universal
use that nobody can be deceived by the use of it, or can be
induced from the use of it to believe that he is buying the
iLemoine v. Ganton, 2 E. D. Smith, 343; Cox, 142.
2 Julian V. Hoosier Drill Co., 75 Ind. 408.
^Lazenby v. White, 41 L. J. N. S. 354. But nine years' inaction,
where knowledge can be imputed to the party, has been held to work
an abandonment of his trade-mark in Saxlehner v. Eisner & Men-
delson Co. (2), 91 Fed. Rep. 536; and an injunction was refused be-
cause plaintiff delayed action for nine years in Amoskeag Mfg. Co.
V. Garner, 55 Barb. 151.
< Wolfe V. Barnett, 24 La. Ann. 97.
*Gillottv. Esterbrook, 48 N. Y. 374.
6 Julian V. Hoosier Drill Co., 75 Ind. 408. This is analogous to the
rule that where one sued for infringing a trade-mark sets up a prior
right to the mark in question, it is incumbent upon him to establish
his prior use by satisfactory evidence. Tetlow v. Tappan, 85 Fed.
Rep. 774.
gGOJ LOSS OF RIGHT TO TIIADE-MARK'S USE. 129
goods of the original trader, it appears to me, however
hard to some extent it may appear on the trader, yet prac-
tically as the right to a trade-mark is simply a right to
prevent a trader from being cheated by other persons'
goods being sold as his goods through the fraudulent use
of the trade-mark, the right to the trade-mark must be
gone." This extract from an opinion of Mellish, L. J.,^
is probably the clearest explanation of the cases involv-
ing this topic. The cases turning upon this point are
many.'^
The adoption of a new label or brand is, of course, an
abandonment of all the distinctive features of the old
label or brand not preserved in the new one.^
The owner of a trade-mark may by a practice of ship-
ping goods bearing the mark to the same consignee, so
that it may be held out to or believed by purchasers to in-
dicate some right to the mark in the consignee, lose the
exclusive right to its use.^
The fact that a manufacturer uses his name or an addi-
tional symbol, such as a coat-of-arms, in connection with
the distinctive word, does not deprive him of his trade-
mark right in the distinctive word. Thus the manufac-
turer of "Eureka" shirts, which he marked "R. Ford's
Eureka Shirt, London," was awarded an injunction re-
straining a defendant from the sale of an article marked
iFord V. Foster, L. R. 7 Ch. D. 611.
2Lazenby v. White, 41 L. J. Ch. 354; Lea v. Millar, Seb. 513; Se-
ton (4th ed.), 242; Lea v. Deakin, 11 Biss. 23; Re Arbenz, L. R. 35
Ch. D. 248; Neva Stearine Co. v. Mowling, 9 Vict. L. R. 98; Sher-
wood V. Andrews, 5 Am. L. R. N. S. 588; Re Hall, 13 OS. Gaz. 229;
Liebig's Extract Co. v. Hanbury, 17 L. T. N. S, 298; Watkins v.
Landon, 52 Minn. 389-393; Marshall v. Pinkham, 52 Wis. 572; Price «&
Steuart, 497. The mere fact that a name used as trade-mark comes
into popular use in a descriptive sense does not invalidate its use as
a trade-mark. Selchow v. Baker, 93 N. Y. 59; Celluloid Mfg. Co. v.
Cellonite Mfg. Co., 32 Fed. Rep. 94; Lawrence Mfg. Co. v. Tennes-
see Mfg. Co., 138 U. S. 537-547; Burton v. Stratton, 12 Fed. Rep. 696.
^Manhattan Medicine Co. v. Wood, 108 U. S. 218; Lea v. Millar,
Seton {4th ed.), 242; Seb. 513.
••Robinson v. Finlay, and Ward v. Robinson, L. R. 9 Ch. D. 487.
9
130 LAW OF UNFAIR TRADE. [§60
"The Eureka Shirt." ^ The manufacturers of "Excelsior
White Soft Soap" sought to enjoin the makers of ' ' Bustard
& Co.'s Excelsior White Soft Soap," and upon the motion
it was held that their right to injunctive relief was not
affected by the fact that the defendants had never used
the word except in conjunction with their firm name.^
A manufacturer who uses his trade-mark in connection
with words indicating that his goods are the product of
another maker will lose his right to have the word used
as trade mark protected. This was held in a case where
"Eton" cigarettes were so put up as to suggest that
they were of foreign manufacture.^ But a manufacturer
who uses his trade-mark on goods prepared for the job-
bing trade, adding to or using therewith the name of the
jobber, does not lose his right to the protection of the
trade-mark, for, as said by Judge Colt: "In doing this
no real deceit was practiced upon the public, because the
purchaser obtained the same goods which he would have
purchased if the name of the jobber had not been upon
them. " * In one case it was argued by the defendants that
when the plaintiffs furnished their "Excelsior" stoves to
the trade and marked the dealers' names upon the stoves,
they thereby permitted the dealer to hold himself out to
the public as the manufacturer of the stoves. This was
not a successful defense, but the court stood upon the
fact that there was "nothing in connection with the
names of these dealers to indicate that they are the
iFord V. Foster, L. R. 7 Ch. D. 616; L. R. 7 Ch. D. 611; 41 L. J.
Ch. 682; 27 L.^T. N. S. 219; 20 W. R. 818; Seb. 384. The mere ad-
dition of a coat-of-arms to a trade-mark (as registered in England)
is not sufficient to disentitle the person using the mark to sue for an
injunction. Melachrino v. Melachrino Cigarette Co., 4 R. P. C. 215;
Cartmell, 223; Hammond v. Bruuker, 9 R. P. C. 301; Cartmell, 142.
2Braham v. Bustard, 1 H. & M. 447; 9 L. T. N. S. 199; 11 W. R.
1061; 2 N. R. 572; Seb. 226. The same defense was attempted where
"Cottolene" was the trade-mark and "Cottoleo, " with the defend-
ant's name, the alleged infringement. Defendant was enjoined.
N. K. Fairbank Co. v. Central Lard Co., 64 Fed. Rep. 133.
•'Wood V. Lambert, L. R. 32 Ch. D. 247.
<Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896-898.
§ 60] LOSS OF RIGHT TO TRADE-MARK'S USE. 131
manufacturers, and there is no evidence that any one ever
supposed they were the manufacturers.'"^
Advertisements published in the United States by a cor-
poration having the exclusive sale of certain Hungarian
mineral waters, to the effect that the name under which
the waters were sold had become a general name for all
similar waters, and that the corporation would thence-
forth distinguish the particular water sold by it by a
special trade-mark, were held to evidence an abandon-
ment of the original mark which was binding on the
owner of the wells.-
In the same case it was held that the failure of the
corporation to sue infringers of the label used in bottling
the water worked an abandonment of the trade-marks
used on the label as against the owner of the well.^
There may be a constructive abandonment of specific
features of a trade-mark, arising from a failure to enu-
merate such features in securing registration. If the reg-
istration shows a claim to a trade-mark "more limited
in its description than the owner's common-law rights
would otherwise be, the owner is bound by such limita-
tion as showing what he really claimed."^ Thus, in an
application for registration of a trade-mark, the failure
to claim the letter "s" as a part or feature thereof was
held to be an abandonment of that feature of the mark.^
iSheppard v. Stuart, 13 Phila. 117; Price & Steuart, 193.
2Saxlehner v. Eisner & Mendelson Co. (1), 88 Fed. Rep. 61; af-
firmed in Saxlehner v. Eisner & Mendelson Co. (2), 91 Fed. Rep. 536.
''Saxlehner v. Eisner & Mendelson Co. (2), 91 Fed. Rep. 536; over-
ruling- Saxlehner v. Eisner & Mendelson Co. (1), 88 Fed. Rep. 61.
â– *Hawley, J., in Hennessy v. Braunschweiger & Co., 89 Fed. Rep.
664-668; citing Kohler Mfg. Co. v. Beeshore, 8 C. C. A. 215; 59 Fed.
Rep. 572; Richter v. Reynolds, 8 C. C. A. 220; 59 Fed. Rep. 577.
^Pittsburgh Crushed Steel Co. v. Diamond Steel Co., 85 Fed. Rep.
637.
CHAPTER VI.
GOOD-WILL.
§ 61 . Defined. — " Good-will is a modern but important
growth of the law, not mentioned by some of the early
writers, but given great prominence at the present time."^
Mr. Justice Story has defined good-will as "the advan-
tage or benefit which is acquired by an establishment be-
yond the mere value of the capital, stock, funds, or prop-
erty employed therein, in consequence of the general
public patronage and encouragement which it receives
from constant or habitual customers, on account of its
local position or common celebrity, or reputation for
skill or affluence, or punctuality, or from other acciden-
tal circumstances or necessities, or even from ancient
partialities or prejudices. "^
It would be very difficult, if indeed possible, to frame
a more accurate and comprehensive definition. This one,
as given, has been expressly and in hcec verba adopted by
the supreme court of the United States, Mr. Chief Justice
Puller prefacing his use of it by saying "there is diffi-
culty in deciding accurately what is included under the
term."^
§62. In particular cases. — "As applied to a news-
paper, the good-will usually attaches to its name rather
iVann, J., in People v. Roberts, 159 N. Y. 70-80; 53 N E. Rep.
685; 45 L. R. A, 126.
2 Story on Partnership, sec. 99.
^Metropolitan Bank v. St. Louis Dispatch Co., 149 U. S. 436-446.
"Good-will was defined by Lord Eldon in Cruttwell v. Lye, 17
Ves. 335-346, to be 'nothing more than the probability that the old
customers will resort to the old place; ' but Vice-Chancellor Wood, in
Churton v. Douglas, Johnson, V. C. 174-188, says it would be taking-
too narrow a view of what is there laid down by Lord Eldon to con-
fine it to that, but that it must mean every positive advantage that