For over three years prior to June, 1877, the plaintiff and defendants, under the firm name of Huwer and Dannenhoffer, carried on the business of manufacturing glass chimneys for lamps, in the city of Brooklyn. Their place of business was called "The Long Island Flint Glass Works," and they adopted the word "Silex" as a trade-mark for the designation of their goods.
In June, 1877, the firm was dissolved and the defendants sold to the plaintiff their interest in the real estate whereon the business was conducted, and also in certain personal property connected with the business; and thereafter the plaintiff continued the same business at the same place, using the same trade-mark. In the month of October thereafter, the defendants commenced to carry on the same business in the city of Brooklyn, and they used the same trade-mark for the designation of the goods manufactured by them.
The plaintiff, claiming that at the time of the sale to him of the real estate and personal property, as above mentioned, he acquired the exclusive right to the trade-mark which had been used by the firm, commenced this action against the defendants to recover damages for the wrongful use of the trade-mark by them, and to restrain its further use. The court, at Special Term, decided the case in favor of the plaintiff; but, upon appeal, the General Term reversed the judgment of the Special Term and granted a new trial on the ground that the exclusive right to the use of the trade-mark had not been acquired by *Page 502 the plaintiff, and this appeal is from the order granting the new trial.
I will assume, for the purposes of this case, that the word "Silex" could be used as a trade-mark, and that the firm of Huwer Dannenhoffer, while it existed, had the exclusive right to use it; and yet I am of opinion that the judgment at Special Term was properly reversed, for the reasons given in the opinion pronounced at the General Term.
After the dissolution of the firm, either one of the persons who constituted the firm could use the trade-mark, until in some way he divested himself of the right to use it. It is undoubtedly true that the defendants could, by agreement, vest the exclusive right to use it in the plaintiff. The question is whether they did. And this question must be determined upon the facts found at Special Term, or upon facts not disputed. There was a deed of real estate to the plaintiff, and there was a bill of sale specifying the personal property sold to the plaintiff. It was found that nothing was said at the time of the sale to the plaintiff about the good-will of the business or about the trade-mark, and there was no reference to the trade-mark in the bill of sale; and there was no agreement on the part of the defendants that they would not engage in manufacturing the same kind of goods, or that the plaintiff should have the exclusive right to continue in Brooklyn the business before carried on by the firm.
The deed and bill of sale showed what the defendants sold to the plaintiff. There is no finding that they were executed or taken by the plaintiff in consequence of any fraud or mistake, and hence they must be held to embody the contract between the parties. (Pickering v. Dowson, 4 Taunt. 779; Mumford v.McPherson, 1 Johns. 414; Durgin v. Ireland, 14 N.Y. 322;Pollen v. LeRoy, 30 id. 549.)
A trade mark is a species of property which may be sold or transmitted by death with the business in which it has been used. (The Leather Cloth Company v. The Am. Leather Cloth Company, 4 De Gex, J. S. 137; S.C., 11 House of Lords Cases, 523; TheG. H. Manuf. Co. v. Hall, *Page 503 61 N Y 226.) There was no finding and no evidence that the defendants intended by their sale to the plaintiff to divest themselves of their property in this trade-mark. This property did not pass as incident to what was sold. It was no necessary part of what was sold. The trade-mark was not in its nature local. It did not import that the goods upon which it was placed were manufactured or produced in any particular locality. It could truthfully be used upon goods manufactured anywhere, and in these respects it was unlike the trade-mark under consideration in the case of TheCongress and Empire Spring Co. v. The High Rock Congress SpringCo. (45 N.Y. 291). Under the circumstances of this case it was incumbent upon the plaintiff to show that the exclusive right to use the trade-mark was actually, by agreement, vested in him, and this he failed to show.
The order appealed from should, therefore, be affirmed and judgment absolute rendered against the plaintiff, with costs.
All concur.
Order affirmed and judgment accordingly.