April 16, 1869. No point was raised in that case that, the bonds having been issued after the new Constitution of Illinois came into force, on July 2, 1870, in pursuance of a vote of the people had on April 30, 1870, conditions prescribed by that vote had not been complied with.

In Oregon v. Jennings the bonds were issued on the 31st of December, 1870, nearly six years before the decision was made in Town of Eagle v. Kohn, and the election was held in the Town of Oregon, Illinois, on the 23d of June, 1870. Section 7 of the Act of April 16, 1869, appears to have been considered by the court in that case; and it held that the recitals in the bonds estopped the town from taking the defense, as against a bona fide holder of the bonds, that the first division of the road was not completed by the time specified in the vote of the people. The court observed that it had been referred to no decision of the Supreme Court of Illinois, made prior to the issuing of the bonds in that case, namely, December 31, 1870, which held to the contrary of the views it announced. But, in the present case the decision in Town of Eagle v. Kohn was made prior to the issue of the bonds.

JOSÉ MENENDEZ ET AL., Appts.,

V.

ROBERT S. HOLT ET AL.

(See S. C. Reporter's ed. 514-525.)

Trademark, when protected-qualities-usefulness-defense-prior use-right of firm—delay in suing-license-damages.

1. In an action for an injunction to restrain dewhich consisted of the words "La Favorita," the fendants from using a certain trademark for flour, fact that plaintiffs were not the actual manufacturers of the flour, upon which they placed such words, does not deprive them of the right to be protected in the use of that brand as a trademark. 2. The brand did not indicate by whom the flour was manufactured; but it did indicate the origin of its selection and classification, and it evidenced that been exercised in ascertaining that the particular the skill, knowledge and judgment of plaintiffs had flour so marked was possessed of a merit rendered definite by their examination and of a uniformity rendered certain by their selection. 3. The fact that flour so marked acquired an extensive sale, because the public had discovered that it might be relied on as a uniformly meritorious quality, demonstrates that the brand deserves pro

tection.

4. Plaintiffs having acquired the exclusive right to the words "La Favorita," as applied to this paraction to say that there was no invasion of that ticular vendible commodity, it is no answer to their right because the name accompanying these words, upon flour sold by defendants, varied from that used by the plaintiffs.

In Randolph County v. Post, 93 U. S. 502 [23: 957], the bonds were issued by the County of Randolph, in Illinois, January 1, 1872, under a vote of the people had June 6, 1870, which imposed a limitation of time as a condition precedent. In October, 1871, the county court extended the time from December 27, 1871, to February 1, 1872. This court held that it could do so notwithstanding the provision, above cited, in the Constitution of July 2, 1870. But the Act of April 16, 1869, does not appear to have been before this court, and the decision in Town of Eagle v. Kohn was not made-including the firm's trademarks. until more than six years after the vote was had, and more than four years after the bonds were issued, in Randolph County v. Post.

5. A casual prior public use of such words, by another manufacturer of flour, over twenty years ago, which use was discontinued before plaintiffs appropriated the words to identify their own flour. and there was no attempt to resume it, is not a sufficient defense to such action.

In Concord v. Robinson, 121 U. S. 165 [30: 885], this court held that subscriptions and donations in aid of railroads, voted by municipal corporations of Illinois, prior to July 2, 1870, such vote being authorized by laws in force when it was taken, could be completed after that date, according to the conditions attached to the vote. In that case, the vote of the Town of Concord, Illinois, had been had on November 20, 1869, in favor of levying a tax to raise a sum of money as a donation to a railroad company, provided the company should run the road through two specified vil

lages. The road was never constructed into or through either of them, and the vote was not for the issue of bonds, but for levying a tax; but bonds were issued in 1871, and this court held them void, in a suit against the town on coupons cut from them, the bonds reciting on their face that they were issued under and by virtue of a specified law of Illinois, which law, however, only authorized towns, including the town in question, to make a donation in aid of the particular road in question, the money to be raised by taxation.

Without considering other grounds on which our decision might be rested, we are of opinion that the decree of the Circuit Court must be affirmed.

6. When a partner retires from a firm, assenting to or acquiescing in the retention by the other partthe future conduct of the business by them under ners of possession of the old place of business and the old name, the good will remains with the latter

7. The intentional use of another's trademark is a fraud. Mere delay or acquiescence by the owner cannot defeat the remedy by injunction in support of the legal right, unless it has been continued so long and under such circumstances as to defeat the right itself.

8. Where consent by the owner to the use of his trademark by another is to be inferred from his than the silence from which it springs; it is, in reknowledge and silence merely, it lasts no longer ality, no more than a revocable license.

9. Where there is no pretense of abandonment, delay in bringing suit may preclude recovery of damages for prior infringement, but will not destroy the right to prevention of further injury. [No. 77].

Argued Nov. 14, 1888. Decided Dec. 10, 1888.

APPEAL from a decree of the Circuit Court

of the United States for the Southern District of New York, for a perpetual injunction restraining the use of a trademark. Affirmed. Opinion below, 23 Fed. Rep. 869.

Statement by Mr. Chief Justice Fuller: Appellees, partners in business under the firm name of Holt & Company, filed their bill of complaint July 17, 1882, against appellants, engaged in business under the firm name of José Menendez & Brother, alleging that they were dealers in and bought and sold flour and grain; that Robert S. Holt had theretofore been for more than twenty-five years at the head of the firm of Holt & Company, which firm had from time to time been changed or dissolved by the retirement of various members, but in each

such instance a new firm had been immediately formed and succeeded to the firm name, good will, brands, trademarks and other assets of the preceding firm, so that there had been no interruption of the name and business identity of Holt & Company for over twenty-five years, during which time said firm had had a high reputation in the trade; that complainants were now legally seised of the good will and all the trademarks ever at any time used by the firm; that they were the owners of a certain trademark for flour, which consisted of the fanciful words "La Favorita," which was originated by the firm and had been used by it | for more than twenty years, to distinguish a certain flour of their selection and preparation; that said firm at all times exercised great care in the selection, packing and preparation of the flour packed and sold by them under the said brand, "La Favorita," and had carefully advertised the same, and by their care and efforts extensively introduced it to the trade, so that the said brand had come to be widely known and sought after by the trade, and the sale of flour so branded constituted an important part of the firm's business; that the brand was applied by stenciling it on the barrels; and that it had been duly registered by the firm in pursuance of law. Defendants were charged with having made use of the brand as a mark for flour of their own preparation or selection, in violation of complainants' rights.

The answer admitted the existence of the trademark and that the defendants had used it, but denied that Holt & Co. were the owners, and averred that one Stephen O. Ryder was a member of Holt & Co. from 1861 to 1868, and had since used, and was entitled to use, said trademark as his own; that said Ryder put his own name on flour in connection with the name "La Favorita;" and that defendants had sold such flour as the special selection of said Ryder, and not as selected by complainants.

Evidence was adduced in relation to the connection of Ryder with the firm of Holt & Co., his retirement therefrom, and the ownership of the brand thereupon, to establish the use of the trademark by Ryder and others without protest on complainants' part; also, subject to objection, to show a prior use of the same as a trademark for flour.

It appeared that Holt & Co. deposited fac similes of the trademark October 17, 1881, in the Patent Office, and that it was duly registered February 28, 1882.

The circuit court refused an accounting, but held complainants entitled to the exclusive use of the words as a brand or trademark for flour, and that the defendants had infringed the rights of complainants in the use of the words on flour not prepared by complainants, and decreed a perpetual injunction. From that decree this appeal was prosecuted, and a reversal is asked on the grounds that the words "La Favorita," as used by the complainants, cannot be protected as a trademark; that there has been no infringement; that the words had been used as a brand before being used by Holt & Co.; that the title of Holt & Co. was not superior to that of S. O. Ryder; and that whatever rights complainants may once have had, had been forfeited by laches.

Mr. Arthur v. Briesen, for appellants: The brand "La Favorita" is not a trademark. Anything that is merely descriptive of the properties, style or quality is open to all.

Del. & H. Canal Co. v. Clark, 80 U. S. 13Wall. 311 (20:581); Amoskeag Mfg. Co. v. Trainer, 101 U. S. 51 (25: 993).

Stale claims are never favored in equity. Stearns v. Page, 48 U. S. 7 How. 819 (12:928);Badger v. Badger, 2 Cliff. 154; Marsh v. Whitmore, 88 U. S. 21 Wall. 185 (22: 485); Brown v. Buena Vista County, 95 U. S. 161 (24: 423);Elmendorf v. Taylor, 23 U. S. 10 Wheat. 152 (6: 289); Piatt v. Vattier, 34 U. S. 9 Pet. 405 (9: 173); Maxwell v. Kennedy, 49 U. S. 8 How. 210 (12: 1051); Badger v. Badger, 69 U. S. 2 Wall. 87 (17: 836); Gleason v. Dist. Col. 127 U. S. 133 (32: 92); Richards v. Mackall, 124 U. S. 183 (31: 396); Sullivan v. Portland & K. R. Co. 94 U. S. 806, 811 (24: 324, 326); Hume v. Beale, 84 U. S. 17 Wall. 336 (21: 602); Hayward v. Eliot Nat. Bank, 96 U. S. 611, 617 (24: 855, 857); Speidel v. Henrici, 120 U. S. 377, 387 (30: 718, 719); McKnight v. Taylor, 42 U. S. 1 How. 161 (11:86); Bowman v. Wathen, 42 U. S. 1 How. 189 (11:97); Wagner v. Baird, 48 U. S. 7 How. 234 (12: 681); Godden v. Kimmell, 99 U. S. 201 (25: 431); Graham v. Boston, H. & E. R. Co. 118 U. S. 161 (30: 196); Holgate v. Eaton, 116 U. S. 33 (29: 538); Wollensak v. Reiher, 115U. S. 96 (29: 350).

Mr. Rowland Cox, for appellees:

A trademark which consists of a word is a short phrase between buyer and seller, which the owner alone is entitled to employ for commercial purposes.

Hier v. Abrahams, 82 N. Y. 519; Congress & E. Spring Co. v. High Rock C. Spring Co. 45 N. Y. 291.

Acquiescence of long standing is no bar to an injunction, although it precludes the party acquiescing from any right to an account for past profits.

Consolidated Fruit Jar Co. v. Thomas, Cox, Manual, 665; Fullwood v. Fullwood, L. R. 9 Ch. Div. 176; Rodgers v. Rodgers, 31 L. T. N. S. 285; Blackwell v. Crabb, 36 L. J. Ch. 504.

Mr. Chief Justice Fuller delivered the opinion of the court:

The fact that Holt & Co. were not the actual manufacturers of the flour, upon which they had for years placed the brand in question, does not deprive them of the right to be protected in the use of that brand as a trademark.

They used the words "La Favorita" to designate flour selected by them, in the exercise of their best judgment, as equal to a certain standard. The brand did not indicate by whom the flour was manufactured, but it did indicate the origin of its selection and classification. It was equivalent to the signature of Holt & Co. to a certificate that the flour was the genuine article which had been determined by them to possess a certain degree of excellence. It did not, of course, in itself indicate quality, for it was merely a fancy name and in a foreign language, but it evidenced that the skill, knowledge, and judgment of Holt & Co. had been exercised in ascertaining that the particular flour so marked was possessed of a merit rendered definite by their examination and of

a uniformity rendered certain by their selection. The case clearly does not fall within the rule announced in Amoskeag Manufacturing Company v. Trainer, 101 U. S. 51, 55 [25:993, - 994], that “Letters or figures which, by the custom of traders, or the declaration of the manu-gress of its business, whether connected with the facturer of the goods to which they are attached, are only used to denote quality, are incapable of exclusive appropriation, but are open to use by anyone, like the adjectives of the language; or in Raggett v. Findlater, L. R. 17 Eq. 29, It may be that where a firm is dissolved and where an injunction to restrain the use upon ceases to exist under the old name, each of the a trade label of the term "nourishing stout" former partners would be allowed to obtain was refused on the obvious ground that "nour-"his share" in the good will, so far as that ishing" was a mere English word denoting might consist in the use of trademarks, by quality. And the fact that flour so marked continuing such use in the absence of stipulaacquired an extensive sale, because the public had discovered that it might be relied on as of a uniformly meritorious quality, demonstrates that the brand deserves protection rather than that it should be debarred therefrom, on the ground, as argued, of being indicative of quality only. Burton v. Stratton, 12 Fed. Rep. 696; Godillot v. Harris, 81 N. Y. 263; Ransome v. Graham, 51 L. J. Ch. 897.

las, Johns. (H. R.V.) 174, 188, says it would be taking too narrow a view of what is there laid down by Lord Eldon, to confine it to that, but that it must mean every positive advantage that has been acquired by the old firm in the propremises in which the business was previously carried on, or with the name of the late firm, or with any other matter carrying with it the "benefit of the business.

Holt & Co., then, having acquired the exclusive right to the words "La Favorita," as applied to this particular vendible commodity, it is no answer to their action to say that there was no invasion of that right because the name of S. O. Ryder accompanied the brand upon flour sold by appellants, instead of the name of Holt & Co. That is an aggravation and not a justification, for it is openly trading in the name of another upon the reputation acquired by the device of the true proprietor. Gillott v. Esterbrook, 47 Barb. 455; S. C. 48 N. Y. 374; Coats v. Holbrook, 2 Sardf. Ch. 586.

These views dispose of two of the defenses specifically urged on behalf of appellants, and we do not regard that of prior public use, even if it could be properly considered under the pleadings, as entitled to any greater weight. Evidence was given to the effect that from 1857 to 1860 the words "La Favorita" were occasionally used in St. Louis by Sears & Co., then manufacturing in that city, as designating a particular flour; but the witnesses were not able to testify that any had been on sale there under that brand (unless it were that of Holt & Co.) for upwards of twenty years. The use thus proven was so casual and such little importance apparently attached to it, that it is doubtful whether Sears & Co. could at any time have successfully claimed the words as a trademark, and, at all events, such use was discontinued before Holt & Co. appropriated the words to identify their own flour, and there was no attempt to resume it.

It is argued, however, that the title of Holt & Co. to the use of the mark was not superior to that of S. O. Ryder, because it is said that Ryder, upon leaving the firm, took with him his share of the good will of the business, and consequently of the trademarks, and hence that the defendants below rightfully sold flour under the brand "La Favorita," when selected by Rider and so marked by him.

Good will was defined by Lord Eldon, in Crutturell 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. Doug

tion to the contrary; but when a partner retires from a firm, assenting to or acquiescing in the retention by the other partners of possession of the old place of business and the future conduct of the business by them under the old name, the good will remains with the latter as of course.

Holt & Co. commenced business in 1845, and had had an uninterrupted existence under that name since 1855; the trademark in question was adopted by the senior member of the firm in 1861, and had been thereafter in continuous use; Ryder became a partner in 1861, and retired February 1, 1869, when a circular was issued, in which he participated, announc ing the dissolution by his retirement, the continuance of the business by the other partners under the same firm name, and the formation of another partnership by Ryder with one Rowland, to transact the flour and commission business at another place, under the name of Rowland & Ryder.

In addition to these facts it is established, by the preponderance of evidence, that it was verbally agreed, at the time Ryder retired, that he surrendered all interest in the brands belonging to Holt & Co. Ryder attempts to deny this, but his denial is so qualified as to render it unreliable as against the direct and positive character of the evidence to the contrary. Indeed, when asked why the brands were not made the subject of appraisement when he went out, as it was conceded all the other property of the firm was, he says that it was because he "gave up all right, title and interest to those valuable brands to Robert S. Holt, out of friendship, so there was no occasion for it." In our judgment, Ryder's claim to any interest in the good will of the business of Holt & Co., including the firm's trademarks, ended with his with drawal from that firm.

Counsel in conclusion earnestly contends that whatever rights appellees may have had were lost by laches, and the desire is intimated that we should reconsider McLean v. Fleming, 96 U. S. 245 [24: 828], so far as it was therein stated that even though a complainant were guilty of such delay in secking relief upon infringement as to preclude him from obtaining an account of gains and profits, yet, if he were otherwise so entitled, an injunction against future infringement might properly be awarded. We see no reason to modify this general proposition, and we do not find in the facts as disclosed by the record before us anything to justify us in treating this case as an exception.

The intentional use of another's trademark

ALFRED V. RYDER, Appt.,

v.

ROBERT S. HOLT ET AL.

is a fraud, and when the excuse is that the | for prior infringement; but there was neither owner permitted such use, that excuse is dis- conduct nor negligence which could be held to posed of by affirmative action to put a stop to destroy the right to prevention of further init. Persistence then in the use is not innocent, jury. and the wrong is a continuing one, demanding The decree of the Circuit Court will, thererestraint by judicial interposition when prop-fore, be affirmed. erly invoked. Mere delay or acquiescence cannot defeat the remedy by injunction in support of the legal right, unless it has been continued so long and under such circumstances as to defeat the right itself. Hence, upon an application to stay waste, relief will not be refused on the ground that, as the defendant had been allowed to cut down half of the trees upon the complainant's land, he had acquired, by that negligence, the right to cut down the remainder (Atty-Gen. v. Eastlake, 11 Hare, 205); nor will the issue of an injunction against the infringement of a trademark be denied on the ground that mere procrastination in seeking redress for depredations had deprived the true proprietor of his legal right. Fullwood v. Fullwood, L. R. 9 Ch. Div. 176. Acquiescence to avail must be such as to create a new right in

the defendant. Rodgers v. Nowill, 3 DeGex, M. & G. 614. Where consent by the owner to the use of his trademark by another is to be inferred from his knowledge and silence merely, "It lasts no longer than the silence from which it springs; it is, in reality, no more than a revocable license." Duer, J., Amoskeag Mfg. Co. v. Spear, 2 Sandf. 599; Julian v. Hoosier Drill Co. 78 Ind. 408; Taylor v. Carpenter, 3 Story, 458; S. C. 2 Woodb. & M. 1.

(See S. C. Reporter's ed. 525).

Jurisdiction in suit on trademark.

Where defendant and complainants below were citizens of the same State, and the bill did not alon goods intended to be transported to a foreign lege that the trademark in controversy was used country (Act of March 3, 1881, chap. 138, § 11, 21 Stat. at L. 502), the circuit court had no jurisdic Argued Nov. 14, 1888. Decided Dec. 10, 1888. [No. 76.]

tion.

APPEAL from a decree of the Circuit Court
of the United States for the Southern Dis-
trict of New York, in an action to restrain the
use of a trademark. Reversed.

The facts are stated in the opinion.
Mr. Arthur v. Briesen, for appellant.
Mr. Rowland Cox, for appellees.

Mr. Chief Justice Fuller delivered the opinion of the court:

It was stipulated in the circuit court that this cause should abide the event of Menendez et al. v. Holt [ante, 526], just decided, and the same decree in favor of complainants was, therefore, rendered in this as in that case. But it is now

So far as the act complained of is completed, acquiescence may defeat the remedy on the principle applicable when action is taken on the strength of encouragement to do it; but so far as the act is in progress and lies in the fut-assigned for error that, as defendant and comure, the right to the intervention of equity is not generally lost by previous delay, in respect to which the elements of an estoppel could rarely arise. At the same time, as it is in the exercise of discretionary jurisdiction that the doctrine of reasonable diligence is applied, and those who seek equity must do it, a court might hesitate as to the measure of relief, where the use, by others, for a long period, under assumed permission of the owner, had largely enhanced the reputation of a particular brand.

But there is nothing here in the nature of an estoppel, nothing which renders it inequitable to arrest at this stage any further invasion of complainants' rights. There is no pretense of abandonment. That woulú require proof of nonuser by the owner or general surrender of the use to the public. The evidence is positive that Holt & Co. continuously used the trademark, always asserted their exclusive right to it, and never admitted that of any other firm or person, and, in the instance of every party, including Ryder, who used this brand on flour not of Holt & Co's selection, that use, when it came to their knowledge, was objected to by the latter, and personal notice given, while publication was also made in the newspapers, circulating where the flour was usually mar keted, containing a statement of Holt & Co's rights and warning against imitations. It is idle to talk of acquiescence in view of these facts. Delay in bringing suit there was, and such delay as to preclude recovery of damages

plainants below were citizens of the same State, and the bill did not allege that the trademark in controversy was "used on goods intended to be transported to a foreign country" (Act of March 3, 1881, chap. 138, § 11, 21 Stat. at L. 502), the circuit court had no jurisdiction, and the decree must be reversed for that reason. The objection is well taken, and the decree is ac cordingly reversed.

THE FARMERS FRIEND MANUFACT-
URING COMPANY, Appt.,

"My invention relates to an improvement in the corn-planters of the class employing a main Whether a reissued patent is for the same in-frame mounted on wheels, which main frame vention as that in the original patent is a ques- is combined with a runner-frame in front, and tion for the court in an equity suit on a com- so attached to the main frame that it may beparison of the two instruments. either a rigid or yielding planter, and also employing cone-gears and driving-chains to actuate the dropping mechanism for planting, and adapted to be used either as a rigid or yielding planter.