Rogers & Brother v. Rogers

Stoddard, J.

As we understand the finding and rulings of the Superior Court, practically the only question left for the determination of this court is in respect to the plaintiff’s exclusive right, as against these defendants, to stamp the word “ Rogers ” upon silver-plated flat ware, such as knives, forks, spoons, etc. In considering this subject it must constantly be borne in mind that all questions of fact are finally disposed of by the Superior Court, and that this court cannot, even by inference, supplement such finding, or supply omitted facts. Under our practice this court is controlled by the finding as it comes to us. The case stands upon an answer denying the material allegations of the complaint, and in so far as the Superior Court omitted to find true the allegations and claims of the plaintiff, those allegations and claims must be regarded as not proved.

The defendants stamped upon the shanks of spoons and forks manufactured by them the combination of words “ C. Rogers & Bros. Al.” The plaintiffs’ stamp is “ * Rogers & Bro. Al.” The finding states in detail the use by several different partnerships or corporations of stamps all bearing the common and distinctive word “ Rogers,” and differing from each other in all other material respects except in the use of this common and conspicuous word “ Rogers,” one concern using a stamp with the word “ Rogers ” alone. The finding then proceeds: “ By reason of the numerous stamps on spoons, forks and knives, containing the word ‘Rogers,’ as before mentioned, and of the efforts of the various concerns who have used such stamps since 1847 to promote the sale of their goods as ‘ Rogers goods,’ the word ‘ Rogers ’ has become the conspicuous and familiar part of such stamps with a large class of retail buyers; and while jobbers and dealers, and those retail buyers who are informed of the facts, readily distinguish between the stamps of the different manufactories by the word or symbols which such stamps do not possess in common, those retail buyers of the articles who buy by the stamps or the single article 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 make of the goods, rely upon the dealer for such information.”

It appears from the extract that there are two governing facts:—1st, that the word “ Rogers ” is the conspicuous, familiar, material and valuable thing in the various so-called trade-marks; 2d, that the stamp of the defendants is liable to be mistaken for that of the plaintiffs because of the use of the word “ Rogers,” and by that limited class alone who look only to the word “Rogers.” And again the case states :—“ Between the stamps so used by the defendants and the stamps used by the plaintiffs upon similar articles manufactured by them respectively, the dealers and jobbers in such articles have no difficulty in distinguishing. And this is also true of those retail buyers who look beyond the word ‘ Rogers.’ But those who regard the word ‘ Rogers ’ only would be liable to confound one with the other, as is the case of the various ‘ Rogers ’ stamps before mentioned. Retail buyers sufficiently acquainted with the various ‘ Rogers ’ stamps in the market to distinguish between the same would have no difficulty in distinguishing between the two stamps of the plaintiffs and defendants; but the general resemblance between the two stamps is such that a person knowing that of the plaintiffs and not knowing that of the defendants might, upon referring to it, but not reading it attentively, mistake it for that of the plaintiffs.” Thus, with reiteration the court below emphasizes the fact that the word “Rogers ” is the controlling word—the one thing that is the basis of all possible confusion or mistake in the use of the two stamps.

There is no finding nor suggestion of fact that any other part of the defendants’ stamp is answerable in any degree for that liability to mistake. If any other part of the stamp, in configuration, collocation, or combination of words, figures or symbols, or in other respect, contributed in any manner to deceive possible purchasers and enable the defendants to sell their goods as those of the plaintiffs, it should so have been found by the trial court. This court cannot find such facts from an inspection of the stamp itself. This is not a case where this court can pronounce as matter of law that the defendants’ stamp in other particulars so resembles that of the plaintiffs as to amount to a representation that the goods are the plaintiffs’ goods. In this particular the case at bar differs from many of the cases cited in the briefs of counsel. In some of the English eases relied upon, and in other instances, the court determined from the evidence in the particular case whether the stamp was of objectionable character, thus exercising a combined jurisdiction over fact and law. In our courts, as before stated, these jurisdictions are separated, the fact being committed to the Superior Court, and the law to this court.

It is said that this stamp, “ C. Rogers & Bros. Al,” is “ stamped upon the backs of the shanks of the spoons and forks in the same manner and place as the plaintiffs’ goods are and have been stamped.” This is undoubtedly an evidential fact, from which the trial court might, in connection with other circumstances, have found a liability to deceive, on account of the location and peculiar characteristic of the defendants’stamps, but the court has not so found; presumptively the evidence did not warrant that conclusion; and, on the contrary, the court repeatedly tells us that the word “ Rogers ” alone is the only possible misleading character. And further, we are informed that “ the method of stamping their name upon such articles manufactured by them, and the locality of the stamp upon the article, has been that commonly employed by manufacturers of such silver-plated articles for many years. The mark ‘ Al ’ has been frequently used by manufacturers of such ware for many years as a mark of quality, and is so regarded in the trade.” Manifestly upon this condition of facts, in the absence of a finding that the location of the stamp, combining with its form, might have a misleading effect, we cannot say as matter of law that it does have that possible effect, particularly in view of this finding, that the location of the stamp is common to the trade, and the addition of the marks of quality,. “ Al,” is commonly used by manufacturers as a quality mark. We feel constrained by the facts in the case to say that there is no foundation laid for the claim that we should rule as matter of law that the judgment of the Superior Court is erroneous, so far as that judgment relates to the stamp in question in other respects than the use of the word “ Rogers.”

This appeal raises the question of error or no error upon the facts found, and “ when, therefore, on such appeal, the record omits to present facts essential to the case of the appellant, this court can simply affirm the judgment, and cannot remand the case to the lower court for amendment, or a further hearing or finding.” Schlesinger v. Chapman, 52 Conn., 273.

Have these plaintiffs, as against these defendants, an exclusive right to the use, in their stamp, of the word “Rogers ” ? Upon this branch of the case there is one further fact stated as follows: “ The purpose of the defendants in stamping their firm name upon the spoons, forks and knives so manufactured by them, has been to indicate to the public that they are the manufacturers of the goods so stamped. But the defendants, in commencing the manufacture of such articles, had in view the popularity in the market of such goods bearing a stamp containing the word ‘Rogers,’ and an inducement to commencing such manufacture was the advantage they might derive from having their goods so stamped.” And then the court finds: “ The allegations of fraudulent design and acts on their [the defendants’] part, contained in articles 11, 12, 13, 14, 15 and 16 of the complaint, are found to be not true.” The 11th article contains an allegation that the defendants, “ with intent to defraud ” the plaintiffs, sent their goods into the market with marks closely resembling the claimed trade-marks of the plaintiff. By article 12 it is stated that by the external shape and appearance of the goods, together with the stamp and mode of selling, the defendants caused their goods to resemble the plaintiffs’. Article 13 contains an allegation that the defendants’ stamp is a close imitation of the plaintiffs’, and is an infringement of their trade-mark, and is well calculated to mislead and deceive, and does deceive purchasers, and induces them to buy the defendants’ goods supposing them to be of the plaintiffs’ manufacture. Article 14 alleges that the defendants’ goods will become known as “ Rogers ” goods, and that thereby purchasers will be led to buy the defendants’ goods believing them to be the plaintiffs’; and by article 15 it is alleged that the defendants fraudulently stamp the word “ Rogers ” on their goods, intending it to operate as a fraud upon the public, upon unwary purchasers, and upon the plaintiffs, in the ways above set forth, etc. So far the trial court has wholly negated the claim of the plaintiffs that the defendants were actually fraudulent in the use of their stamp, and that such stamp was intentionally used to personate the plaintiffs’ goods, notwithstanding the finding that the defendants had in view the popularity of goods marked “ Rogers,” and that one inducement was the advantage they might derive from so stamping their goods. But in saying that the allegations of fraudulent design and acts on their part, contained in article 16 of the complaint, are found to be not true, the trial court goes further than to deny the assertion of active, personal, intentional, fraudulent design and counterfeiting, and negatives the constructive fraudulent design implied in the statement contained in that article.

Article 16 is as follows:—“ That by reason of the facts aforesaid the use of the word ‘ Rogers,’ either as the whole or a part of their stamp upon spoons, forks and knives, must and will, under the fixed circumstances inevitably connected with such use, necessarily infringe upon the plaintiffs’ lawful enjoyment of the use and benefit of their trademarks aforesaid, and must and will induce and cause unwary purchasers and others to purchase the spoons, forks and knives of the defendants, stamped with the word 6 Rogers,’ either as the whole or as a part of their stamp, in place of, and supposing them to be, spoons, forks and knives manufactured by the plaintiffs, to the great injury of the plaintiffs and in fraud of their rights.” In this article there is no statement of active fraud, or intentionally misrepresenting the defendants’ goods to be those of the plaintiffs, but only a statement that inevitably any use, no matter how honest and customary, of the word “ Rogers ” in the stamp, will induce and cause unwary purchasers to purchase goods of the defendants’ make, supposing them to be the plaintiffs’, and therefore any use of the word “ Rogers ” in such stamp by the defendants is thus constructively fraudulent. This conclusion and assertion of the plaintiffs, so stated, is denied by the trial court. The plaintiffs’ case is stripped, by the finding, of every fact collateral or additional to the mere use of the word “ Rogers ” in the stamp.

The plaintiffs’ claim, as thus stated, is surely not warranted by any decided case or the authority of any test-writer brought to our attention. Substantially all the leading and governing facts and characteristics of the recent English case of Massam v. Thorley's Cattle Food Co., L. R., 14 Ch. Div., 748, a case that is largely relied upon by the plaintiffs, are eliminated from the plaintiffs’ case. A few citations from the several opinions in that case will indicate how fundamentally different it was from the case with which we are dealing. And it should be borne in mind that this English court was considering questions of fact upon the evidence in the case. Page 755 : “ ‘ Thorley's Wood for Cattle' meant that food which for many years was manufactured at works belonging to Joseph Thorley, and afterwards was manufactured by his executors carrying on his business at the same works.” Page 456 : “We have heard nothing like a satisfactory explanation of how J. W. Thorley’s company came into existence, unless it was that the promoters thought that Thorley’s food was a very profitable thing, and had got a great reputation, and that they should like to steal the reputation which it had acquired. In order to do that they somehow or other got into communication with a brother of the late Joseph Thorley, who for some years had been in the service of Joseph Thorley, and during those years, according to his own account, which I take to be true, had acquired a knowledge of the recipe and of the manufacture, but who, for several years previous to the existence of this company, had never had anything to do with the manufacture of food for cattle. Having the name of Thorley, which was the distinguishing mark of the food for cattle, he either tendered himself for sale, or was found for purchase by some persons, in order that his name might be got into a joint stock company formed for the sake of selling these goods. Why was that name got in there except for the purpose of inducing the world to believe that it was the same concern, or that it was the same Thorley, or a continuation of the same Thorley, whose name was the principal characteristic of the name of the article? The name of the company is, to my mind, a fiction. The meaning which the name of ‘ J. W. Thorley & Co., Limited ’ would convey to any person’s mind, is that there had been a partnership of J. W. Thorley & Co., a real partnership, which had been carrying on business in the manufacture of this food for cattle, and that for some reason or other, such as we have seen constantly in our experience in this court, the partnership had been minded to convert itself into a limited company for the more convenient transaction of its business......I am, therefore, of opinion that in this case what the defendant company have done has been calculated to deceive, and I am bound to say, in my judgment, I have no doubt was from the first intended to deceive the persons purchasing their article into the belief that they were purchasing the article which Joseph Thorley had formerly manufactured at the works which had attained the great reputation which Thorley’s manufacture appears to have obtained.” Baggallay, L. J., said:—“ I do not profess to say now whether J. W. Thorley, if honestly carrying on business on his own account in the manufacture and sale of this article, might not call it ‘ Thoiiey’s Food for Cattle,’ provided he took proper precautions to prevent it being supposed that the article he was so manufacturing was manufactured by the representatives of Joseph Thorley, but I feel satisfied that the company has no right whatever to use that name. I am strongly inclined to the opinion, though it is unnecessary to decide, that according to the view of Lord Westbbry in the Glenfield Starch case, the expression ‘ Thoiiey’s Food for Cattle ’ indicates the trade denomination of the article manufactured by the particular person, but even on the assumption that the defendant company had not only the right to manufacture this article but to call it ‘Thorley’s Food for Cattle,’ I have come to the conclusion on the evidence that they adopted such a mode of endeavoring to push that article in the market as to induce many persons to entertain the reasonable belief that the article they were so putting upon the market had been manufactured by the representatives of Joseph Thorley.” Bramwell, L. J., said:—“ The complaint of the plaintiffs is not that the defendants made and sold the same article that the plaintiffs make, but that it was sold in such a way as to induce purchasers to believe that it was the article manufactured by the establishment which was Joseph Thorley’s, and now is carried on by his executors. The learned counsel for the defendants'admit that, if that is so, there is a cause of action against them, and that they must be restrained from doing it. The question, therefore, is one of fact—was the trade so carried on by the defendants as to give rise to that belief? It appears to me almost impossible to entertain a doubt upon that question.” James, L. J., finally announced that an injunction would issue, and Mr. Glasse, who was of counsel, said :—“ But is it not the substance of your Lordship's judgment that they are not to use the word Thorley in connection with their cattle food?” James, L. J.:—“We cannot prohibit their using the name if they use it in a way not calculated to mislead the public.”

Quotations are made at such length from this case because of the importance apparently attached to it by the plaintiffs. It'will be seen that the case was regarded as one where a joint stock company had assumed the name of “ Thorley ” with the preconceived design of inducing the public to believe that their manufacture was that of the plaintiffs, with the intent to pirate the marks of origin of the plaintiffs’ goods. In this view the English case goes no further than this court in Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manf. Co., 37 Conn., 278. Further, as indicated by their opinions, the judges strongly leaned to the position that “ Thorley’s Food for Cattle ” had, under the evidence in the case, come to indicate the trade denomination of the article manufactured by the particular person, and had obtained that secondary meaning wholly apart from its ordinary and apparent meaning, assimilating it, in this particular, to the “ Glenfield Starch” case in Wotherspoon v. Currie, L. R., 5 H. L. Cas., 508. Lastly, the English case, as the final and determinate View of the case, was treated as a case of intentional false representation by the defendants, in their method of advertisement by labels, and method of packing goods and carrying on their business. This is shown by the refusal of the court to enjoin the use of the word “Thorley ” absolutely in the cattle food business, and permitting its use so long as that use was not calculated to mislead. The rationale of the decision of Massam v. Thorley's Cattle Food Co. is that it was a case of actual intentional misrepresentation. The scope and limit of the ruling in that case, in regard to the use of the name “ Thorley,” is fixed by the decision of the same court in Thorley's Cattle Food Co. v. Massam, in which the court protected by injunction the “ Thorley’s Cattle Food Company ” in the prosecution of its business in that name against circulars and advertisements of the defendants, the executors of Joseph Thorley. Both James and Baggallay, L. Js., in the latter case, refer approvingly, and as containing the gist of the law, to the language of Lord Justice Turner in Burgess v. Burgess, 3 DeGex, M. & G., 896, as follows:—“No man can have any right to represent his goods as the goods of another person; but in applications of this kind it must be made out that the defendant is selling his own goods as the goods of another. When a person is selling goods under a particular name, and another person, not having that name, is using it, it may be presumed that he so uses it to represent the goods sold by himself as the goods of the person whose name he uses. But when the defendant sells goods under his own name, and it happens that the plaintiff has the same name, it does not follow that the defendant is selling his goods as the goods of the plaintiff. It is a question of evidence in each case, whether there is false representation or not.”

Considered in the ordinary course of trade, it is a contradiction of terms to say that a man selling goods under his own name sells them as the goods of another, even if that other have the same name. The cases seem to require some element of false representation other than that implied in the fair, honest and ordinary use of a person’s own name.

An examination of the following and kindred eases wherein the use of a person’s name has been regulated, will show that in most instances conscious, intentional fraudulent misrepresentation on the part of the defendant had been resorted to; in others, there was such a combined use of the name with other marks, characters, figures, or form and arrangement of circulars, advertisements, etc., as to amount to a false representation, and the combination only was enjoined. No instance can be found where the use of the .name only, in good faith, has been stopped. See Croft v. Day, 7 Beavan, 84; Holloway v. Holloway, 13 Beavan, 213; Clark v. Clark, 25 Barb., 78; Sykes v. Sykes, 3 Barn. & Cress., 541; Metzler v. Wood, L. R., 8 Ch. Div., 608, 610; Fullwood v. Fullwood, L. R., 9 Ch. Div., 179; Devlin v. Devlin, 69 N. York, 214; Landreth v. Landreth, 22 Fed. Rep., 41; Shaver v. Shaver, 54 Iowa, 213 ; Stonebraker v. Stonebraker, 33 Md., 268; Williams v. Brooks, 50 Conn., 278; Meriden Britannia Co. v. Parker, 39 Conn., 450.

Upon the other hand there has been, from the first to the present time, a general consensus of judicial opinion that the use of a personal name in a fair, honest and ordinary business manner, could not be prevented, even if damage resulted therefrom. Croft v. Day, 7 Beavan, 84; Holloway v. Holloway, 13 id., 213 ; Burgess v. Burgess, 3 De Gex, M. & G., 896.; Faber v. Faber, 49 Barb., 357 ; Clark v. Clark, 25 id., 80; Meneeley v. Meneeley, 62 N. York, 427; Comstock v. Moore, 18 How. Pr., 424; Gilman v. Hunnewell, 122 Mass., 139 ; McLean v. Fleming, 96 U. S. Reps., 252; Carmichel v. Latimer, 11 R. Isl., 395 ; Landreth v. Landreth, 22 Fed. Rep., 41; Singer Manf. Co. v. Long, L. R., 18 Ch. Div., 412. Other cases and dicta might be cited; but it is deemed unnecessary.

In one brief filed for the plaintiffs it is said that they make no exclusive claim to the word “ Rogers; ” but there is coupled with that disclaimer a statement that the word “ Rogers ” is the conspicuous and valuable part of their mark, and that any use of it by the defendants, in the ordinary way of manufacturers, by stamping their goods with it, either alone or in any combination, will indubitably produce results which they are now striving to prevent'; and in another brief filed by other counsel of the plaintiffs the broad claim is made that the word “ Rogers ” used as a stamp should be stopped. And, as we have before said, this is the only contention left to the plaintiffs by the finding of the court below.

In conclusion, we think there is neither authority nor reason in support of the doctrine that the fair, honest use of a name can be enjoined when it is used in the ordinary course of business, in the way and manner in which other manufacturers of similar goods are accustomed to use their own name in the preparation for sale, or sale, of goods; that such a rule would operate in restraint of trade, and prohibit a person from using the ordinary means that all are entitled to use in the prosecution of business enterprises ; that such use contains no element of false representation or personation in any just and true sense, and that, while it may be true that a possibility exists that the goods of one will be purchased to some extent by persons who either know no distinction, or even by the occasional few who suppose them to be the goods of another, this condition of things is inevitable in trade and commerce, inhering in the nature of things, and attaches- in kind, if not in degree, in all cases where a manufacturer sends goods of any particular description, but without distinguishing mark, into a district or country where such goods were before that time unknown, and establishing a reputation in that district or country as the manufacturer and vendor of such goods. Any new comer in the same district with similar goods would undoubtedly profit by the reputation of the former’s goods; yet the benefit to the public generally of free competition, and the natural rights of all to seek any and all markets, would render ineffectual all attempts to shut out such new comer.

Since the preparation of the foregoing opinion the second edition of “ Browne on Trade-Marks ” has been distributed. That author, upon a review of the cases, lays down this proposition :—“ A manufacturer has a right to affix his own name- to an article of his own production. And any injury which another manufacturer, having the same surname, may’ suffer in consequence thereof, is damnum absque injuria.” Sec. 420. And in his commentary upon Howe v. Howe Machine Co., 50 Barb., 236, he says :—“ This case is apt to mislead the superficial observer, and even for a moment stagger the preconceived notions of one used to critical examination. It has been cited more than once in support of this absurd proposition, to wit: that when two men in the same trade have the same surname, one may employ that surname as a trade-mark, to the exclusion of any such right by the other; that is, when two brothers have made and sold sewing machines, the one who first stamped his surname upon a machine was the sole possessor of the right to stamp his workmanship with his true name. This conclusion has no warrant from any authoritative source.” Sec. 423.

There is no error in the judgment of the Superior Court.

In this opinion Carpenter and Granger, Js., concurred.