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eted June 1, 1903, and the petition for certiorari filed February 17, 1905.
And it is further ordered, adjudged and decreed by the court that the commissioners heretofore appointed, namely, Alfred Hazlett, Esq., and John W. Halliburton, Esq., be, and they are hereby, directed to establish, or cause to be established, under their direc- Argued and submitted March 16, 1905. Detion, permanent monuments marking said boundary line between the state of Missouri
cided April 24, 1905.
and the state of Nebraska, as shown by said IN ERROR to the United States Circuit
aforesaid surveys, and that said commissioners establish such permanent monuments upon said boundary line as may in their opinion be necessary for permanently marking and establishing the same, and that they make a report to this court of their acts and doings therein, and that said report contain a full and complete description of said boundary line and the monuments thereon estab
lished. And that in the execution of this decree said commissioners are hereby authorized to employ such surveyors and other assistants, and procure such material as may be necessary in the establishment of said permanent monuments marking said boundary line, in accordance with the decree of this court.
And it is further ordered that said commissioners be paid for their services herein such compensation as may be agreed upon by the respective parties to this suit and said commissioners, and if the parties to this suit and said commissioners are unable to agree upon said compensation, such compensation shall be awarded to said commissioners as in the opinion of this court, upon the filing of the final report by said commissioners, may seem proper.
It is further ordered that said commissioners make said final report of their acts and doings in the premises to this court on or before the 15th day of May, 1905. March 6, 1905.
(198 U. S. 115)
Court of Appeals for the Fifth Circuit to review a judgment which affirmed a judgment of the Circuit Court for the Eastern District of Louisiana in favor of defendant in a petitory action for real property, originally begun in the District Court of St. Mary's Parish, in the state of Louisiana. Dismissed for want of jurisdiction. Also a PETITION FOR CERTIORARI to review
the same judgment. Denied.
See same case below, 53 C. C. A. 31, 116 Fed. 251.
The facts are stated in the opinion.
Todd for plaintiff's in error.
Messrs. Edgar H. Farrar, B. F. Jonas, and E. B. Kruttschnitt for defendant in
Mr. Chief Justice Fuller delivered the opinion of the court:
This was a petitory action for real property, or an action of ejectment, brought by the heirs of Gonsoulin, plaintiffs in error, against the Gulf Company, defendant in error, in the district court of St. Mary's parish, Louisiana, where the land was situated. The petition alleged that a grant or concession by the Spanish government was originally made to Dubuclet, St. Clair, and Gonsoulin in 1783, and that the interests of Dubuclet and St. Clair were conveyed to the heirs of Gonsoulin after 1808.
That the United States government issued a patent to the heirs of Gonsoulin, and that petitioners' "claim by said grant and conces
FERNAND BONIN, Valcour Bonin, et al., sion covering said lands dates back to the
Plffs. in Err.,
year 1783 or thereabouts, and said concession was recognized and confirmed by the United States government after proper and legal surveys had defined the boundaries and
Appeal-review of judgment of circuit court segregated said grants.”
The mere assertion of title under a patent from the United States presents no question which, of itself, deprives the judgment of the circuit court of appeals, in a petitory action for real property, of that finality which exists if the jurisdiction of the circuit court depends solely upon diversity of citizenship. Certiorari to a circuit court of appeals will not be granted upon dismissing, for lack of Jurisdiction, a writ of error to that court, where the judgment sought to be reviewed was entered May 27, 1902, the writ of error was allowed May 22, 1903, the cause dock
That said lands were "now in the possession of, and illegally detained and held by, the Gulf Company, a body corporate, organized under the laws of the state of New Jersey, domiciled in the state of New Jersey."
The Gulf Company filed its petition for the removal of the cause, alleging that it was, at the time the suit was brought, and when the petition was filed, a citizen of New Jersey, and that the heirs of Gonsoulin were citizens of the state of Louisiana. The cause was removed accordingly, and plaintiffs filed in the circuit court an amended and supple
(198 U. S. 118)
Fay-Sholes Company, Petitioners,
WYCKOFF, SEAMANS, & BENEDICT.
mental petition, stating that all the plain- | HOWE SCALE COMPANY OF 1886 and tiffs were citizens of Louisiana, and that defendant was a citizen of New Jersey, and praying that petitioners "be recognized as the true and lawful owners of the said property described in the patent, letters patent, or grant, issued to Dautrieve Dubuclet, Benoist de St. Clair and François Gonsoulin by the United States of America, on August 21st, 1878," and that they be put in possession.
Plaintiffs pitched their title solely on this patent. Defendant, for peremptory exception, pleaded the prescription of ten years, the prescription of thirty years, and res judicata.
Unfair competition-use of family name.
Unfair competition does not arise out of the use in a corporate name of the surnames of one or more of the incorporators, where such use by the individuals themselves or in a partnership would not be open to that charge.*
A manufacturer of typewriters under the names "Remington" and "Remington Standard" is not entitled to protection against the adoption by persons bearing respectively the surnames "Remington" and "Sholes" of the name "Remington-Sholes" for their typewriters, and the giving of that name to the corporation formed for their manufacture and sale, where the only confusion in the minds of the public as to the origin of the product results from the similarity in names, and not from the manner of their use.*
On the trial the circuit court charged the jury to find for defendant on the pleas of prescription, and nonsuited defendant on the plea of res judicata. Verdict was returned, and judgment entered accordingly, and the case having been carried to the circuit court of appeals for the fifth circuit, the judgment was affirmed. 53 C. C. A. 31, 116 Fed. 251. The jurisdiction of the circuit court rested alone on diversity of citizenship. The as- Argued January 16, 17, 1905. Decided sertion of title under a patent from the United States presented no question which,
of itself, conferred jurisdiction. Florida C.
& P. R. Co. v. Bell, 176 U. S. 328, 44 L. ed. 490, 20 Sup. Ct. Rep. 399. No dispute or controversy as to the effect or construction of the Constitution, or of any law or treaty of the United States, on which the result depended, appeared by the record to have been really and substantially involved, so that it could be successfully contended that jurisdiction was invoked on the ground that the suit arose under Constitution, law, or treaty. Arbuckle v. Blackburn, 191 U. S. 405, 48 L. ed. 239, 24 Sup. Ct. Rep. 148.
On the pleadings and evidence, the questions in the circuit court were questions of prescription and of res judicata; in the circuit court of appeals, of prescription; and plaintiffs' petitions did not assert, in legal and logical form, or at all, the existence of a real controversy, in itself, constituting an independent ground of jurisdiction.
The judgment of the circuit court of appeals was, therefore, final, and the writ of error must be dismissed.
The judgment was entered in the circuit court of appeals May 27, 1902; this writ of error was allowed May 22, 1903; and the case was docketed here June 1, 1903.
Plaintiffs in error filed a petition for certiorari herein, February 17, 1905, which was submitted February 27, and its consideration postponed to the hearing on the merits. In our opinion, that writ should not be granted. Ayres v. Polsdorfer, 187 U. S. 595, 47 L. ed. 317, 23 Sup. Ct. Rep. 196.
April 24, 1905.
ON WRIT and Cross Writ of Certiorari to
the United States Circuit Court of Appeals for the Second Circuit to review a decree which reversed a decree of the Circuit Court for the District of Vermont enjoining the use of the designation "Remington" or "Rem-Sho" as the name or part of the name of typewriting machines, and remanded the cause with instructions to decree in favor of complainant only as to the name "Remington." Decrees of both courts below reversed, and the cause remanded to the Circuit Court, with directions to dismiss the bill.
See same case below, 58 C. C. A. 510, 122 Fed. 348.
Statement by Mr. Chief Justice Fuller: This was a bill exhibited, in September, 1898, by Wyckoff, Seamans, & Benedict, a corporation of New York, in the circuit court of the United States for the district of Vermont, against the Howe Scale Company of 1886, a corporation of Vermont, alleging that complainant had been for many years engaged in the manufacture and sale of typewriting machines known in the markets and to the trade and public, and referred to, identified, offered for sale, and sold as the "Remington typewriter," and the "Remington Standard typewriter," and that the words "Remington" and "Remington Standard" had been registered in the Patent Office under the act of Congress; and charging defendant with fraud and unfair competi
Writ of error dismissed; certiorari denied. tion in making use of the corporate name 25 S. C.-39.
*Ed. Note.-For cases in point, see vol. 46, Cent. Dig. Trade-Marks and Trade-Names, §§ 68-77, 84.
It appeared that the mandate of the circuit court of appeals was issued April 22, 1903, and that the circuit court entered a final decree, June 22, 1903, enjoining the use of the word "Remington," and also that after the original decree of the circuit court the
"Remington-Sholes Company" and the desig- | reversed with instructions to dismiss the bill. nations "Remington-Sholes," "Rem-Sho" 58 C. C. A. 510, 122 Fed. 348. and "Remington-Sholes Company," in advertising for sale, offering for sale, and selling typewriting machines; and praying for an accounting, and for an injunction restraining defendant from advertising or offering for sale or selling typewriting machines manufactured by the "Remington-Sholes Remington-Sholes Company changed its corCompany," bearing the name "Remington" or "Remington-Sholes" or "Rem-Sho" or "Remington-Sholes Company," and from advertising or offering for sale or selling any such machines under said designation or under any designation of which the name "Remington" was a part.
Defendant was the sales agent of the "Remington-Sholes Company," a corporation of Illinois, and was engaged in selling the typewriting machines called the "RemingtonSholes" or "Rem-Sho" typewriter, which were manufactured by the Illinois corporation at Chicago. The right to use those designations in the way they were used was asserted by the defense, of which the RemingtonSholes Company, and subsequently the FaySholes Company, had charge. The word "Rem-Sho" was alleged to have been registered in the Patent Office as a trademark.
The circuit court found that defendant's use of the name "Remington" was an unjustifiable invasion of complainant's right to the use of that name, and entered a decree, August 14, 1901, denying an account for gains and profits, without prejudice to the recovery thereof from the Remington-Sholes Company; and perpetually enjoining the use of the designation "Remington," or "RemSho," as the name or part of the name of any typewriting machine whatsoever manufactured by the "Remington-Sholes Company," or by defendant, or any person or concern, and from selling, offering, or advertising for sale in any manner, typewriting machines so manufactured "under the name of or as 'Remington-Sholes' or 'Rem-Sho,' or by any designation of which the word 'Remington' or the abbreviation 'Rem' shall constitute a part." 110 Fed. 520.
The case was carried by appeal to the circuit court of appeals for the second circuit, and was there heard before Circuit Judges Wallace, Lacombe, and Coxe. April 20, 1903, the decree was reversed, without costs, and the cause remanded "with instructions to decree in favor of complainant only as to the name 'Remington." Lacombe, J., delivered an opinion in support of that decree, Coxe, J., concurring in the conclusion because "unable to distinguish this cause from R. W. Rogers Co. v. Wm. Rogers Mfg. Co. 17 C. C. A. 576, 35 U. S. App. 843, 70 Fed. 1017;" Wallace, J., dissented, holding that the decree of the circuit court should be
porate name to that of Fay-Sholes Company, and ceased to make its machines marked with the registered trademark "Rem-Sho," and with the inscription "Remington-Suoles Company, Mgrs., Chicago."
It also appeared that in October, 1901, complainant filed its bill in the circuit court of the United States for the northern district of Illinois against the RemingtonSholes Company, for alleged unfair trade competition, and that, after answers filed, an order was entered staying proceedings until the determination of this cause, and providing that if this cause resulted in favor of complainant, that cause should be sent at once to an accounting.
On petition of the Howe Scale Company of 1886, and the Fay-Sholes Company, filed October 22, 1903, and on petition of Wyckoff, Seamans, & Benedict, filed December 21, 1903, writ and cross writ of certiorari were granted.
For some years prior to 1860 E. Remington and his three sons were engaged at Ilion, New York, in the manufacture of firearms under the firm name of E. Remington & Sons. The father died in 1863, and in 1865 the sons, who had continued the business, organized the corporation E. Remington & Sons under the laws of New York. About 1866 E. Remington & Sons produced a breech-loading rifle that obtained great vogue throughout the world, and was and is known as "the Remington rifle." The "Remington sewing machine" and other machines were also manufactured and sold.
In 1873 E. Remington & Sons began the manufacture of a tpyewriting machine, the most important features of which were invented and patented by Christopher Latham Sholes. It was the pioneer writing machine, and called "the Typewriter," and "the Sholes & Glidden typewriter," and in 1880 the names "Remington" and "Remington Standard" were used instead, as they have since been continuously.
One of complainant's witnesses testified that the typewriter was called "Remington" "for the reason that the name Remington was known the world over, owing to their building guns for foreign governments, building sewing machines, and having one of the largest manufacturing works in the world." In March, 1886, the typewriter branch of the business of E. Remington & Sons was sold
to Messrs. Wyckoff, Seamans, & Benedict, | In the fall of 1896 the company had become and there was also transferred the exclusive so deeply indebted that it became necessary right to the name "Standard Remington to take steps to meet its obligations, and at Typewriter," by which name the assignment states the machines were generally known. The assignment contained the express reservation to E. Remington & Sons of the right to engage in the manufacture and sale of typewriters at any time after ten years from its date.
Complainant's typewriting machines have been for years conspicuously marked with the name "Remington" and with a large "Red Seal" trademark on the paper table and frame; the name and address "Remington Standard Typewriter, manufactured by Wyckoff, Seamans, & Benedict, Ilion, N. Y., U. S. A.," on the cross bar in front of the keyboard; the words and figures "No. 6 Remington Standard Typewriter No. 6" on the front of the base, and the words "This machine is protected by 67 American and foreign patents" on the back. "Remington" and "Remington Standard" and the "Red Seal" have all been registered by complainant as trademarks.
a meeting of the stockholders December 14, 1896, it was resolved that the property and assets be sold at public auction, the buyer to have the privilege of using all or any part of the company's corporate name. Thereupon Fay purchased in his own name, but as trustee for himself and other stockholders, the whole of the assets of the company, together with its good will, the exclusive right to use its trademarks, etc., and for some months carried on the business at the factory formerly occupied by the Remington-Sholes Typewriter Company. The charter of that company was surrendered in April, 1897, and the Remington-Sholes Company was incorporated under the laws of Illinois, and purchased all the assets, good will, trademarks, trade names, etc., theretofore belonging to Fay and the Remington-Sholes Typewriter Company. And the new company continued at the same factory and through the same instrumentalities to manufacture and sell its typewriters. It was stipulated that the common stock of the new company "was divided among the stockholders in keeping with the amounts of cash actually invested by them in the Remington-Sholes Typewriter Company, and that the allotment of said common stock to said Franklin Remington was in keeping with such plan.”
The machines made and sold by the Remington-Sholes Typewriter Company were
Sholes, Chicago." After the new company entered on the business the trademark "RemSho" was adopted (registered as a trademark October 19, 1907), and the machines were also marked on the cross bars with the words "Remington-Sholes Company, Mfrs., Chicago." The Remington-Sholes Typewriter Company widely advertised that its machine "was not the Remington Standard typewriter," and the catalogues circulated by the Remington-Sholes Company declared: "We state, then, emphatically that this company has no connection whatever with that well-known and excellent machine, the Remington Standard typewriter, and caution pos
In 1892 Z. G. Sholes, a son of Christopher Latham Sholes, invented a typewriting machine, and early in 1893 the Z. G. Sholes Company was organized under the laws of Wisconsin for its manufacture, but the stock of the company was never issued, and no machine was ever made or sold by it. Later in the year Franklin and Carver Remington, sons of Samuel Remington, formerly president of the E. Remington & Sons corpora- | plainly marked with the words "Remingtontion, bought a three-fourths interest in Sholes' invention, Sholes retaining one fourth, and a like interest in the stock of the company, paying from eight to nine thousand dollars. They entered into a written agreement with Sholes, which provided, among other things, that "no further, other, | or different business of any kind or nature shall be transacted by said corporation or in its behalf, except that the same may be dissolved, in due form of law, as soon as practicable hereafter." Franklin Remington gave his entire time to the promotion of the enterprise, and advanced for expenses from six to seven thousand dollars in addition to the original investment of eight or nine thou-sible customers against confusing the 'Remsand. The name of the machine was subsequently changed by Sholes from "The Z. G. Sholes" to "The Remington-Sholes." Thereafter the Remingtons and Sholes induced Head and Fay of Chicago to furnish funds to manufacture the Remington-Sholes machine; and a corporation organized in the spring of 1894 for its manufacture was designated the "Remington-Sholes Typewriter Company." This company purchased tools and machinery, and its typewriting machines were placed on the market in December, 1894.
Sho' with that machine or any other."
Messrs. Austen G. Fox, George P. Fisher, Jr., James H. Peirce, and William Henry Dennis for the scale company et al.
Donnelly, William W. Dodge, Paul ArmMessrs. Edmund Wetmore, Henry D. itage, and Archibald Cox for Wyckoff, Sea
mans, & Benedict.
Mr. Chief Justice Fuller delivered the opinion of the court:
Referring to the Remington-Sholes Com
pany, it was unanimously held by the circuit | and similar instances are cases of damnum court of appeals: "We do not find in this absque injuria." voluminous record sufficient evidence that defendant has itself done anything to promote confusion in the minds of the public, except to use the name 'Remington' on its machines and in its literature."
Accepting that conclusion, it follows that complainant's case must stand or fall on the possession of the exclusive right to the use of the name "Remington."
But it is well settled that a personal name cannot be exclusively appropriated by any one as against others having a right to use it; and as the name "Remington" is an ordinary family surname, it was manifestly incapable of exclusive appropriation as a valid trademark, and its registration as such could not in itself give it validity. Brown Chemical Co. v. Meyer, 139 U. S. 540, 35 L. ed. 247, 11 Sup. Ct. Rep. 625; Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002; Elgin Nat. Watch Co. v. Illinois Watch Case Co. 179 U. S. 665, 45 L. ed. 365, 21 Sup. Ct. Rep. 270.
The general rule and the restrictions upon it are thus stated in Brown Chemical Co. v. Meyer. There plaintiff had adopted as a trademark for its medicine the words "Brown's Iron Bitters," and the defendants used upon their medicine the words "Brown's Iron Tonic." This court, after commenting upon the descriptive character of the words "Iron Tonic," and confirming the defendants' right to the use of these, said:
"It is hardly necessary to say that an ordinary surname cannot be appropriated as a trademark by any one person as against others of the same name who are using it for a legitimate purpose; although cases are not wanting of injunctions to restrain the use, even of one's own name, where a fraud upon another is manifestly intended, or where he has assigned or parted with his right to use it."
And, after citing numerous authorities, Mr. Justice Brown, delivering the opinion, continued:
In Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002, the rule is thus laid down by Mr. Justice White:
"Although 'every one has the absolute right to use his own name honestly in his own business, even though he may thereby incidentally interfere with and injure the business of another having the same name. In such case the inconvenience or loss to which those having a common right are subjected is damnum absque injuria. But although he may thus use his name, he cannot resort to any artifice, or do any act calculated to mislead the public as to the identity of the business, firm, or establishment, or of the article produced by them, and thus produce injury to the other beyond that which results from the similarity of name.""
In the present case, the decree enjoined the use, "in any manner whatsoever," "of the designation 'Remington' as the name, or part of the name, of any typewriting machine whatsoever manufactured by the Remington-Sholes Company, or by defendant or any person or concern, and from selling, offering, exposing or advertising for sale by means of signs, show cards, catalogues, circulars, publications, advertisements, or by word of mouth, or in any manner whatsoever, typewriting machines manufactured by said Remington-Sholes Company or by defendant, or any person or concern under the name of or as 'Remington-Sholes,' or by any designation of which the word Remington shall constitute a part." This denies the right to use the personal name, rather than aims to correct an abuse of that right, and involves the assertion of the proposition that the use of a family name by a corporation stands on a different footing from its use by individuals or firms. But if every man has the right to use his name reasonably and honestly, in every way, we cannot perceive any practical distinction between the use of the name in a firm and its use in a corporation. It is dishonesty in the use that is condemned, whether in a partnership or cor
"These cases obviously apply only where the defendant adds to his own name imitations of the plaintiff's labels, boxes, or pack-porate name, and not the use itself. ages, and thereby induces the public to believe that his goods are those of the plaintiff. A man's name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest, and fair exercise of such right, he is no more liable for the incidental damages he may do a rival in trade than he would be for an injury to his neighbor's property by the smoke issuing from his chimney, or for the fall of his neighbor's house by reason of necessary excavations upon his own land. These
Goodyear's India Rubber Glove Mfg Co. v. Goodyear Rubber Co. 128 U. S. 598, 32 L. ed. 535, 9 Sup. Ct. Rep. 166, was a suit by a corporation of New York against a corporation of Connecticut, to restrain the use in business of the name "Goodyear's Rubber Manufacturing Company," or any equivalent name. It was held that "Goodyear Rubber" described well-known classes of goods produced by the process known as Goodyear's invention; and that such descriptive names could not be exclusively appropriated. And Mr. Justice Field, delivering the opinion,