appropriation by the defendant of trade which belonged to the plaintiff. The mere use of a tradename which one person has found highly successful in bringing his goods to the favorable attention of the public in one business territory, by another person in another business territory, constitutes no actionable wrong. Actual or probable deception of the public to the harm of the plaintiff is the basis of the action. There can be no unfair competition unless the plaintiff is actually a rival for the trade which the defendant secures. 7760C

Territorial limitation as to retail business.-The extent of the plaintiff's trademark rights is "coextensive with the territory throughout which it is known and from which it has drawn its trade," so that it may enjoin the use of the mark by a competing retail store within that trading area.God

§ 15. The necessity of user.-There can, finally, be no right in or to a trademark apart from its use. "The mere sale of a trademark apart from the business in which it has been used confers no right of ownership, because no one can claim the right to sell his goods as goods manufactured by another. To permit this to be done would be a fraud upon the public." 81 To quote from a New York court, "There is no such thing as a trademark 'in gross,' to use that term by analogy. It must be 'appendant' of some particular business in which it

60c-Rugg, C. J., in Kaufman v. Kaufman, 223 Mass. 104; 111 N. E. Rep. 691. "It was decided in C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100; 102 N. E. 87; Ann. Cas. 1914C, 926, after ample review of the authorities and a full discussion of principles, that where a plaintiff has established a tradename which is not strictly a trademark, as indicating that goods bearing it are put upon the market by him, he is entitled to protection against unfair competition in its use by others only within the territorial boundaries where he has established, his tradename by actual commercial transactions, and not outside that territory. As was said by Mr. Justice Sheldon, at pages 106, 107 of 215 Mass., at pages 89, 90 of 102 N. E., Ann. Cas. 1914C, 926, the vendor who has built up a tradename by the use of particular words, has a right to be protected in selling his goods against the unfair competition of any others who may

*

*

#

#

*

seek by imitating his brands *
to palm off their goods as his.
Where the words have not gained
that meaning, no rights of the plain-
tiff are infringed by the defendant's
use of them. The defendant has the
right to imitate
where this
involves no *
attempt to get
the benefit of the public's desire to
have goods [from the plaintiff].
The gist of the action is not
the harmless use of the particular
words and symbols, but the appro-
priation of the plaintiff's business.'
This is the statement of the law
which governs the case at bar. Hol-
brook v. Nesbitt, 163 Mass. 120; 39
N. E. 794; Hanover Star Milling
Co. v. Allen & Wheeler Co., 208 Fed.
513; 125 C. C. A. 515; Munn & Co.
v. Americana Co., 83 N. J. Eq. 309;
91 Atl. 87." Kaufman v. Kaufman,
223 Mass. 104, 106.

60d-Hub Clothing Co. v. Cohen,
- Pa. St. -; 113 Atl. Rep. 677.
61-Witthaus v. Braun, 44 Md.
303; 22 Am. Rep. 44.

is actually used upon, or in regard to specified articles. It follows, therefore, that the owner of a trademark can not sell territorial rights in a trademark to different persons, so as to enable them to make and sell goods as being made by him.63 "It goes without saying that a trademark or tradename can only be acquired by adoption accompanied with actual use. The inventor of a system of manufacturing garments, who has never engaged in their actual manufacture and sale, has no trademark right in a mark to be applied to such garments.65

The use of the mark must be in bona-fide business transactions. One who shipped sample boxes bearing the mark to three dealers who had not ordered the goods, and who paid. the shipper five cents each for the boxes, their usual sale price being fifty cents each, was held not to have established a right to the mark.65a

§ 16. How trademark rights may be acquired. A mere casual use, interrupted, or for a brief period, will not suffice to establish a trademark right in the mark; there must be such a user, as to its length and publicity, as will show an intention to adopt the mark as a trademark for a specific article, although "the right to use does not depend upon any particular period of usage.

The question of length of use is now greatly complicated by the place of use, where the infringer is operating in a locality to which the plaintiff's goods bearing the trademark have effected commercial penetration. But it seems clear that if the trademark has been established by the plaintiff in his own. locality even very limited sales in the defendant's locality will suffice to warrant injunctive relief." 67b

It must be borne in mind that marks, containers, get-up, labels and the like, other than technical trademark rely entirely upon being known, through use, to a substantial portion of the purchasing public, as indicating the plaintiff's product; under the "secondary meaning" rule considered in detail throughout this book.

§ 17. Trademarks as subjects of sale, assignment or bequest. In the early adjudications the assignability of trademarks was not clearly established.68

It can now be said, however, that trademarks are generally assignable during the lifetime of the owner of the mark, and capable of transmission at his death. Indeed, this rule is the necessary and indispensable correlative of the rule that trademarks have perpetual existence. But there is the necessary qualification that with the trademark must go the good will of the business, the right to select or manufacture the article to which the former owner has been in the habit of affixing the trademark in use. Any other course would tend to mislead the public. It is provided by Section 70 of the

67b-The "Silverpan Jam" case, Faulder v. Rushton, 20 R. P. C. 477, 484, 492, 495.

68-See Corwin v. Daly, 7 Bos. 222; Cox, 265, where the court says, referring to a name used as a trademark: "The employer of it can neither give any special right to another, nor abandon it to the community so as forever to take away the right of employing it to desig nate his wares." In another case it has been held, that one can so sell his name as to deprive himself of the right to use it for his own manufacture, and give the right to another. Probasco v. Bouyon, 1 Mo. App. 241. In a later case before the same court, however, the court said: "We think the answer to this question depends upon the effect which the use of the name, in each particular instance, is shown to have upon the minds of the public," and concluded that if the public would be led to believe the assignor was still manufacturing the goods, when they were the manufacture of another,

69

the transaction would be a fraud upon the public and the use of the assigned name would not be protected. Skinner v. Oakes, 10 Mo. App. 45; Cox, Manual, 680. This dictum was quoted with approval in Oakes v. Tonsmierre, 4 Woods, 547; Price & Steuart, 817; 49 Fed. Rep. 447.

69-Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217; Massam v. Cattle Food Co., L. R. 14 Ch. D. 748; Ex parte Lawrence, 44 L. T. N. S. 98; Seb. 630; In re Wellcome, L. R. 32 Ch. D. 213: Leather Cloth Co. v. American Leather Cloth Co., 4 DeG. J. & S. 137; 33 L. J. Ch. 199; Seb. 223; Goodman v. Meriden Brittania Co., 50 Conn. 139; Witthaus v. Braun, 44 Md. 303; 22 Am. Rep. 44: Seb. 492; Skinner v. Oakes, 10 Mo. App. 45; Taylor v. Bemis, 4 Biss 406, Fed. Case 13779; McVeagh v. Valencia Cigar Factory, 32 Off. Gaz. 1124; Price & Steuart, 970: Oakes v. Tonsmierre, 4 Woods, 547: 49 Fed. Rep. 447; Price & Steuart, 817; Baldwin v.

English Patents, Designs and Trademarks Act of 1883 that "A trademark, when registered, shall be assigned and transmitted only in connection with the goodwill of the business concerned in the particular goods or classes of goods for which it has been registered, and shall be determinable with the goodwill." No corresponding provision existed in the act of congress of 1881. The Act of 1905, sec. 10, provides "that every registered trademark shall be assignable in connection with the goodwill of the business in which the mark is used."

Inasmuch as there can be no title in a trademark apart from the goodwill of the business in which it is used, it follows that, in an assignment of the business and goodwill of the owner of the mark, the title to the trademark, without being specially mentioned, passes to the assignee.70 It is not so clear, however, that the purchaser acquires the right to use Von Micheroux, 25 N. Y. Supp. 857; Morgan v. Rogers, 19 Fed. Rep. 596; 12 Off. Gaz. 1113; Smith v. Imus, 32 Alb. L. J. 455; Cotton v. Gillard, 44 L. J. Ch. 90; Smith v. Fair, 14 Ont. Rep. 729; Burton v. Stratton, 12 Fed. Rep. 696; Price & Steuart, 668; Pepper v. Labrot, 8 Fed. Rep. 29; Chadwick v. Covell, 151 Mass. 190; 23 N. E. Rep. 1068; Cox, Manual, 716; Cooper v. Hood, 26 Beav. 293; Churton v. Douglas, Johns. 174; Shipwright v. Clements, 19 W. R. 599; Sohier v. Johnson, 111 Mass. 238; Gregg v. Bassett, 3 Ont. L. Rep. 263; Dant v. Head, 90 Ky. 255; 13 S. W. Rep. 1073; J. G. Mattingly Co. v. Mattingly, 96 Ky. 430; 31 S. W. Rep. 985; Covert v. Bernat, 156 Mo. App. 687; 138 S. W. Rep. 103; Crossman v. Griggs, 186 Mass. 275; 71 N. E. Rep. 560; Covell v. Chadwick, 153 Mass. 263; 25 Am. St. Rep. 625.

70-Shipwright v. Clements, 19 W. R. 599; Seb. 350; Congress & Empire Spring Co. v. High Rock Congress Spring Co., 57 Barb. 526; Cox, 599; 45 N. Y. 291; 10 Abb. Pr. N. S. 348; 6 Am. Rep. 82; 4 Am. L. T. 168; Cox, 624; Seb. 354;

Witthaus v. Braun, 44 Md. 303; 22 Am. Rep. 44; Seb. 492; Morgan v. Rogers, 19 Fed. Rep. 596; 26 Off. Gaz. 1113; Cox, Manual, 692; Merry v. Hoopes, 111 N. Y. 420; Churton v. Douglas, Johns. 174; Fulton v. Sellers, 4 Brewst. 42; Thompson v. Mackinnon, 2 Steph. Dig. 726; Lippincott v. Hubbard, 28 Pitts. L. I. 303; Burkhardt v. Burkhardt Co., 4 Ohio N. P. 358; Listman Mill Co. v. Wm. Listman Mill Co., 88 Wis. 334; Prince Mfg. Co. v. Prince's Metallic Paint Co., 39 N. Y. S. R. 488; Menendez v. Holt, 128 U. S. 514; 32 L. Ed. 526; Hegeman v. Hegeman, 8 Daly, 1; Sarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624; 35 C. C. A. 496; Allegretti v. Allegretti Chocolate Cream Co., 177 Ill. 129; 53 N. E. Rep. 487; affirming s. c. 76 Ill. App. 581; Snyder Mfg. Co. v. Snyder, 54 Ohio St. 86; 43 N. E. Rep. 325; Whitcomb v. Converse, 119 Mass. 38; 20 Am. Rep. 311. Above text cited and approved. President Suspender Co. v. Macwilliam, 233 Fed. Rep. 433, 437.

72

the name of the vendor, this right being affirmed in some cases and negatived in others. It has been held that a territorial right to use a trademark can not be assigned73 though the contrary rule appears to be settled.

74

Mortgage. As trademarks can not be sold apart from the business in which they are employed, they can not be mortgaged apart from that business.74a

The fact of a trademark containing the name or initials of a former owner of a business will not disentitle an assignee of the business from its use, because the proper name is treated as indicative of the business rather than the present owner of the business.75 But the courts of the United States are inclined to insist that the public be notified of the change of ownership, and this is now the safer rule, particularly where the trademark is a mark of special qualities, due to

71-Banks v. Gibson, 34 Beav. 566; Levy v. Walker, L. R. 10 Ch. D. 463; Webster v. Webster, 3 Swanst. 490; Clark v. Leach, 32 Beav. 14; Bond v. Milbourn, 20 W. R. 197; Tussaud v. Tussaud, 38 W. R. 440; Phelan v. Collender, 13 N. Y. Sup. Ct. 244; Hoff v. Tarrant & Co., 71 Fed. Rep. 163; affirmed in Tarrant & Co. v. Hoff, 76 Fed. Rep. 959; 22 C. C. A. 644; J. G. Mattingly Co. v. Mattingly, 96 Ky. 430.

72-Scott v. Rowland, 20 W. R. 208; Lewis v. Langdon, 7 Sim. 421; Turner v. Major, 3 Giff. 442; Dence v. Mason, 41 L. T. N. S. 573; Dickson v. McMaster, 18 Ir. Jur. 202; Reeves v. Denicke, 12 Abb. Pr. N. S. 92; Howe v. Searing, 10 Abb. Pr. 264; Cox, 244; Petersen v. Humphrey, 4 Abb. Pr. 394; Cox, 212; Thynne v. Shove, 89 L. T. Jour. 84; Mayer v. Flanagan, 12 Tex. Civ. App. 405; Sherwood v. Andrews, 5 Am. L. Reg. N. S. 588; Seb. 263. 73-Snodgrass v. Wells, 11 Mo. App. 590.

76

75-Pepper v. Labrot, 8 Fed. Rep. 29; LePage Co. v. Russia Cement Co., 2 C. C. A. 555; 51 Fed. Rep. 941; Jennings v. Johnson, 37 Fed. Rep. 364; Frazer v. Frazer Lubricator Co., 121 Ill. 147; 13 N. E. Rep. 639; McLean v. Fleming, 96 U. S. 245; 24 L. Ed. 832; Symonds v. Jones, 82 Me. 302; 8 L. R. A. 570; Filkins v. Blackman, 13 Blatchf. 440; Fed. Case No. 4786; Weed v. Peterson, 12 Abb. Pr. N. S. 178; Young v. Jones, 3 Hughes 274; Fed. Case No. 18159; Fulton v. Sellers, 4 Brewst. 42; Weston v. Ketcham (1), 39 N. Y. 54; Clark v. Ins. Co., 7 Mo. App. 71; Frank v. Sleeper, 150 Mass. 583; 23 N. E. Rep. 213; Hoxie v. Chaney, 143 Mass. 592; Russia Cement Co. v. LePage, 147 Mass. 206; 17 N. E. Rep. 304; Brown Chemical Co. v. Meyer, 139 U. S. 540; 35 L. Ed. 247; Bulte v. Ingleheart Bros., 70 C. C. A. 76; 137 Fed. Rep. 492, 499. The fact that a trademark includes the name and portrait of the first owner does not render it unassignable to another. Richmond Nervine Co. v. Richmond, 159 U. S. 293, 302; 40 L. Ed. 155.

76-Manhattan Med. Co. v. Wood, 108 U. S. 218; 27 L. Ed. 706; Horton Mfg. Co. v. Horton Mfg. Co., 18