The Socialist Party was masquerading was condemned by The New York Court of Appeals.+2a

The "Society of the War of 1812" had its name protected from adoption and use by a rival historical and patriotic society, against the defense that "no injunction can issue against the use of a name, except where that name actually interferes with some commercial business or trade of the plaintiff."4

The fraternal organization known as the "Elks," the Salvation Army and Young Women's Christian Association, have had the names of their organizations protected as against simulations tending to confuse the public; but otherwise as to the Knights of Pythias2

Institutions of learning seldom resort to unfair competition, judging from the absence of their names in the reports. The "Dubuque College" case went off upon the ground that any person of ordinary prudence could see the difference between "Dubuque College" and "Dubuque German College and Seminary," the fact that they "were working along different lines" and that there was no evidence of actual confusion of students or donors of gifts.428

The sporting organizations to whose names injunctive protection has been granted include the Cape May Yacht Club.42h Financial institutions are not apt to engage in unfair competition for business, and the action of "The Detroit Savings Bank" to enjoin the use of the name "Bank of Detroit" was dismissed because the names were not so similar as to create public confusion. 421

42a-In re Social Democratic Party, 182 N. Y. 442; 75 N. E. Rep. 415.

42b-Society of 1812 v. Society of 1812, 46 App. Div. 568, 571; 62 N. Y. Supp. 355.

42c-B. P. O. Elks v. Improved B. P. O. E., 205 N. Y. 459; 98 N. E. Rep. 756; L. R. A. 1915B, 1074; Ann. Cas. 1913E, 639.

42d-Salvation Army v. Salvation Army, 135 App. Div. 268, 274; 120 N. Y. Supp. 471.

42e-Y. W. C. A. v. Y. W. C. A. of Chicago, 194 Ill. 194; 62 N. E. Rep. 551; 56 L. R. A. 888.

42f-Supreme Lodge Knights of Pythias v. Improved Order K. of P., 113 Mich. 133; 71 N. W. Rep. 470; 38 L. R. A. 658. Compare Daughters of Isabella v. Daughters of Isabella, 83 Conn. 679; 78 Atl. Rep. 333; Ann. Cas. 1912A, 822; Knights of Macabees v. Searle, 75 Neb. 285:

106 N. W. 448; Knights of Pythias v. Creswill, 128 Ga. 775; 58 S. E. Rep. 163; National Circle D. I. v. National Order D. I., 270 Fed. Rep. 723; reversing 252 Fed. Rep. 815.

42g-Dubuque German College v. St. Joseph's College (Iowa), 169 N. W. Rep. 405. For a restraint of the use of a conflicting name for a barber school, see Danton v. Mohler Barber School, 88 Oreg. 164; 170 Pac. Rep. 288.

42h-Cape May Yacht Club v. Cape May Yacht & Country Club, 81 N. J. Eq. 454; 86 Atl. Rep. 972.

42i-Detroit Sav. Bank v. Highland Park State Bank of Detroit, 201 Mich. 601; 167 N. W. Rep. 895. Compare Farmers' Loan & Trust Co. v. Farmers' L. & T. Co. of Kas., 1 N. Y. Supp. 44. But as to "Morris Plan" banks, see Industrial Finance Corp. v. Community Finance Co., 294 Fed. Rep. 870, 872 (C. C. A. 5).

§ 78. Fictitious proper names.-Whether the use of a fictitious proper name will vitiate an accompanying trademark so as to deprive its owner of relief in equity depends upon whether fraud is accomplished through the use of the name. Thus, one Thomas Nelson Dale, making thread made and sold by him with the fictitious firm name "Thomas Nelson & Co." was granted an injunction against an infringer, the court saying "the public is not in fact deceived, as it is shown that no such firm exists as Thomas Nelson & Co. who are known to be manufacturers of thread. "43 Upon the same principle, if a manufacturing or business establishment has a firm name which it uses upon its merchandise, it is no fraud upon the public if the firm name no longer represents the same individuals that it did when first adopted.44

In cases of this class, if the two proper names involved are idem sonans, a difference in spelling is no defense.45

§ 79. Revocation of license to use one's own name.—When a person has permitted another to build up a business under his name, the license may become irrevocable. It was so held by the Supreme Court of Pennsylvania, where the purchaser of the machinery and stock of goods of an insolvent partnership at a sheriff's sale was given permission to continue the use of the firm name. A bill was filed four years subsequently to enjoin the purchaser from continuing to use the name, and for an account of profits. Among other controlling facts, it appeared that at the time of the sheriff's sale the goodwill and firm name were valueless, and that their sole, value was due to the efforts of the purchaser. This decision seems to be sound, and it is chiefly of value because of the distinction between the license here involved, and the license which is implied in the case of the infringer of a technical trademark, and which has been held to be revocable at any time. Mestre

43-Dale v. Smithson, 12 Abb. Pr.

237; Cox, American Trademark

Cases, 282.

44-Leather Cloth Co. Ltd. v. American Leather Cloth Co. Ltd., L. R., 11 H. L. C. 523, 542.

45-As, "McLean" and "McLane"

(McLean v. Fleming, 96 U. S. 248; 24 L. Ed. 829); "Rogers" and "RoDgers" (International Silver Co. v. Rogers Bros. Cutlery Co., 136 Fed. Rep. 1019); "Stuart" and "Stewart" (Stuart v. F. G. Stewart Co., 91 Fed. Rep. 243; 33 C. C. A. 480).

zat, J., said: "It is undoubtedly true that a mere license without consideration is determinable at the pleasure of the licensor. But that is not the rule in this state, where the enjoyment of the license must necessarily be and is preceded by the expenditure of money. In such cases the license becomes an agreement on a valuable consideration, and is irrevocable. "'46

§ 80. Corporate names.-"In assuming its name, a corporation acts at its peril,'a and the good faith of its incorporators is not material if that name too closely resembles that of another corporation. The general rule governing the supervision of equity over the names of corporations has been comprehensively stated as follows: "In respect to corporate names, an injunction lies to restrain the simulation and use by one corporation of the name of a prior corporation which tends to create confusion, and to enable the later corporation to obtain, by reason of the similarity of names, the business of the prior one. The courts interfere in these cases, not on the ground that the state may not affix such corporate names as it may elect to the entities it creates, but to prevent fraud, actual or constructive. The names of corporations organized under general laws, and in most other cases, are chosen by the promoters, and it would be an easy way to escape from the obligations which are enforced as between individuals if a corporation were granted immunity by reason of their corporate character.

1947

Probable confusion of business is usually a prominent factor in the disposition of cases of this class.48

"A corporation may be enjoined from using a name or conducting a business under a name so similar to the name of a previously established corporation, association, partnership, or individual, engaged in the same line of business, that confusion or injury results therefrom.

46-Harris v. Brown, 202 Pa. 16; 51 Atl. Rep. 586.

46a-Gilbert, J., in Juvenile Shoe Co. v. Fed. Trade Com., 289 Fed. Rep. 57, 59 (C. C. A. 9); citing American Order Scottish Clans v. Merrill, 151 Mass. 558; 24 N. E. Rep. 918; 8 L. R. A. 320; Metropolitan Tel. Co. v. Metropolitan Tel. Co., 156 App. Div. 577; 141 N. Y Supp. 598.

46b-W. E. Garrett & Sons v. T. Il. Garrett & Co., 78 Fed. Rep. 472; 24 C. C. A. 172; Elbs v. Rochester

7719

Egg Carrier Co., 134 N. Y. Supp.

983.

47-Higgins Co. v. Higgins Soap Co., 144 N. Y. 462; 39 N. E. Rep. 490; 43 Am. St. Rep. 769.

48-Drummond Tobacco Co. V. Randle, 114 Ill. 412; 2 N. E. Rep. 536; Original LaTosca Social Club v. LaTosca Social Club, 23 App. D C. 96; S. Howes Co. v. Howes Grain Cleaner Co., 46 N. Y. Supp. 165; Accident Ins. Co. v. Accident Ins. Corp., 51 L. T. N. S. 597.

49-Mount, J., in Martell v. St.

1

"It is unquestionable that such deception may be practiced by fraudulent use of a corporate name.

7750

"A corporation chooses its own name. It does it with a view to the business in which it is presently to engage. It is therefore charged with the duty of not selecting a name for fraudulent purposes. It is the duty of courts of equity to enforce the observance of this rule. Plaintiff, however, says that it got its name from the state, and may therefore use it, and that defendant can not now use its name in the state because the secretary of state will not grant it a license on account of the similarity of its name to the name of plaintiff. ̧ The complete answer to that contention is that plaintiff selected its name to accomplish a fraudulent purpose. A court of equity can not be stayed in its duty to protect property rights by means of such a subterfuge as the plaintiff has practiced. The organization of corporations under modern laws is a simple performance. It is controlled wholly by the men who seek that form of business organization. This being the case, the act of taking out a corporate charter, although it invokes the authority of the state, can not be made use of for purposes of fraud. If it is made use of for that purpose, the fact that the charter was obtained from the state, can not deprive a court of equity of its power tɔ prevent fraud and protect property rights. The most solemn decrees of courts will be set aside when they are procured by fraud. Much more will the voluntary acts of individuals in forming a corporation. ''50a

Francis Hotel Co., 51 Wash. 375; 98 Pac. Rep. 1116; quoted and followed in Rosenburg v. Fremont Undertaking Co., 63 Wash. 52; 114 Pac. Rep. 886; Gramm Motor Truck Co. v. Fisher Motor Co., 30 Ont. L. Rep. 1; British-American Tobacco Co. v. British-American Cigar Stores Co., 211 Fed. Rep. 933; 128 C. C. A. 431; General Film Co. v. General Film Co., 237 Fed. Rep. 64; 150 C. C. A. 266; M. M. Newcomer Co. v. Newcomer's New Store, 142 Tenn. 108; 217 S. W. Rep. 822; Mobile Transfer Co. v. Schwarz, 195 Ala. 454; 70 So. Rep. 640; Munn v. Americana Co., 82 N. J. Eq. 63; 88 Atl. Rep. 330; Bender v. Bender Store Fixture Co., 178 Ill. App. 203. 50 Seaman, J., in Keystone Oil

& Mfg. Co. v. Buzby, 135 C. C. A. 185, 188; 219 Fed. Rep. 473, 476.

50a-Amidon, J., in General Film Co. of Mo. v. General Film Co. of Me., 237 Fed. Rep. 64, 66 (C. C. A. 8); citing Charles S. Higgins Co. v. Higgins Soap Co., 144 N. Y. 462; 39 N. E. 490; 27 L. R. A. 42; 43 Am. St. Rep. 769; Bender v. Bender S. & O. F. Co., 178 Ill. App. 203; Celluloid Mfg. Co. v. Cellonite Mfg. Co. (C. C.), 32 Fed. 94; United States Light & Heating Co. of Maine v. United States Light & Heating Co. of New York et al. (C. C.), 181 Fed. 182; Peck Bros. & Co. v. Peck Bros. Co., 113 Fed. Rep. 291; 51 C. C. A. 251; 62 L. R. A. 81. To the same effect, see Wm. A. Rogers, Ltd., v. H. O. Rogers Silver Co., 237 Fed. Rep. 887.

The courts are confused in their phraseology with reference to the character of corporate names. There can be no trademark right in a corporate name, for the conclusive reason that it is not, as such, applied to the subject-matter of commerce. In an early case Judge Deady, of Oregon, said, “The corporate name of a corporation is a trademark from the necessity of the thing, ''51 and this very phrase, with other dicta, has been quoted with approval in a more recent case.52 The author has in a former section collected the judicial definitions of trademark, and it is a scientific impossibility to bring Judge Deady's dictum within the scope of either of those definitions, or to extend the definitions to include that dictum. Mr. Justice Clifford's definition may be referred to as making the author's position clearer. 53 It is entirely erroneous to treat a corporate name as being a trademark.

This error has arisen from the unfamiliarity of the courts with the essential requirements of technical trademarks, and the fact that equitable relief had to be administered in cases where the courts had no precedents at hand except in the trademark decisions, which afforded similar reasoning to support their conclusions.

The reason why equity intervenes to protect corporate names from imitation is that they are essential parts of the being of corporations, or, as expressed by the Supreme Court of Missouri, its name is a necessary element of the existence of a corporation.54

As the Rhode Island court has phrased it: "The principles upon which these cases rest are that, although a corporation may be legally created, it can no more use its corporate name in violation of the rights of others than an individual can use his name, legally acquired, so as to mislead the public and to injure another."55 The courts, therefore, will protect a cor

51-Newby v. Railroad Co., Fed. Case No. 10144, Deady, 609. "The name of a corporation has been said to be the 'knot of its combination,' without which it can not perform its corporate functions." Wallace, J., in Goodyear Rubber Co. v. Goodyear's Rubber Mfg. Co., 21 Fed. Rep. 276.

52-Investor Pub. Co. v. Dobinson, 72 Fed. Rep. 603, 606. 53-McLean v. Fleming, 96 U. S. 245-254; 24 L. Ed. 828.

54-State v. McGrath, 92 Mo.

357.

55-Armington v. Palmer, 21 R. I. 109; 43 L. R. A. 95; 42 Atl. Rep. 308.