little worth."50 Therefore, as a rule, the right to use one's own name in a particular business has not been denied merely because another, similarly named, is already so engaged under his name.51 If deception is nevertheless likely and confusion as to the origin of the goods probable, the courts have held that these circumstances arise from the exercise of legal rights unprovoked by any wrongful act,52 and therefore that they are to the plaintiff damnum absque injuria.53 Only when a palpable fraud characterizes the defendant's use of his own name in business will an absolute injunction issue against the continued use. Stated otherwise, it must be established that the defendant's use of his own name is accompanied by an affirmative act or "artifice" "calculated to deceive."54 Courts have not yet recognized any distinction between those cases in which the defendant ventures into the plaintiff's business because he actually wants to engage in that particular field and those in which he does so merely to capitalize upon his fortunate name.5

In the Waterman Pen case, Mr. Justice Holmes declared:

55

It now is established that when the use of his own name upon his goods by a later competitor will and does lead the public to understand that those goods are the product of a concern already established and well known under that name, and when the profit of the confusion is known to and, if that be material, is intended by the later man, the law will require him to take reasonable precautions to prevent the mistake.56 The extent of that duty to take such precautions is limited by the defendant's allegedly "sacred and inalienable right" to the use of his own name in business. Courts 5o Hilton v. Hilton, 89 N. J. Eq. 182, 183, 104 Atl. 375 (1918), modifying 89 N. J. Eq. 149, 102 Atl. 16 (1917).

51

Brown Chemical Co. v. Meyer, 139 U. S. 540 (1891), affirming 31 Fed. 453 (C.C.E.D.Mo. 1887); Fidelity Bond & Mortgage Co. v. Fidelity Mortgage Co., 12 F. 2d 582 (C.C.A. 6th 1926); Moon Brothers v. Moon, 300 Mich. 150, 1 N. W. 2d 488 (1942); Edelstein v. Edelstein, 6 S. W. 2d 400 (Tex. Civ. App. 1928); Goidl v. Advance Neckwear Co., 123 S. W. 2d 865 (Tex. 1939), affirming 98 S. W. 2d 364 (Tex. Civ. App. 1936), following Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118 (1905), reversing Wyckoff, Seamans & Benedict v. Howe Scale Co., 122 Fed. 348 (C.C.A. 2d 1903), reversing 110 Fed. 520 (C.C.D.Vt. 1901), and Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U. S. 554 (1908), affirming 146 Fed. 37 (C.C.A. 6th 1906).

53 Andrew Jergens Co. v. Woodbury, 273 Fed. 952, 966 (D.Del. 1921), aff'd, 279 Fed. 1016 (1922), cert. denied, 260 U. S. 728 (1922); Brown Sheet Iron & Steel Co. v. Brown Steel Tank Co., 198 Minn. 276, 269 N. W. 633 (1936).

53

Guth Chocolate Co. v. Guth, 215 Fed. 750 (D.Md. 1914), aff'd, 224 Fed. 932 (C.C.A. 4th 1915), cert. denied, 239 U. S. 640 (1915); Goldwyn Pictures Corp. v. Goldwyn, 296 Fed. 391 (C.C.A. 2d 1924); Da Pron v. Russell, 87 Colo. 394, 288 Pac. 178 (1930); Russia Cement Co. v. Le Page, 147 Mass. 206, 209, 17 N. E. 304 (1888); Burns v. William J. Burns International Detective Agency, 235 Mass. 553, 556, 127 N. E. 334 (1920); Seligman v. Fenton, 286 Pa. 372, 375, 133 Ad. 561 (1926). 5 Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118, 137 (1905), reversing 122 Fed. 348 (1903); Ralph Bros. Furniture Co. v. Ralph, 26 Northampton 291 (Pa. 1938). Such an artifice was evident in De Youngs v. Jung, 27 N. Y. Supp. 370 (1894), where the plaintiff's name was "De Youngs" and the defendant “Jung" changed his name to "The Youngs." The case of Holland Furnace Co. v. New Holland Mach. Co., 24 F. 2d 751 (E.D.Pa. 1927), is not in line with the authorities.

55 In Royal Baking Powder Co. v. Royal, 122 Fed. 337 (C.C.A. 6th 1903), defendant R. T. Royal was a manufacturer of bicycles and bicycle sundries, who, only because of his name, went into the baking powder business. He was ordered to "present his own name in the least conspicuous manner possible consistent with the right to place his name and address upon the goods made by him" (p. 348). 56 L. E. Waterman Co. v. Modern Pen Co., 235 U. S. 88, 94 (1914), affirming 197 Fed. 534 (1912). In J. & J. Cash v. Cash, 18 Rep. Pat. Cas. 213 (1901), 19 Rep. Pat. Cas. 181 (1902), Kekewich, J., granted an absolute injunction restraining the use of the name Cash. The Court of Appeals altered this by adding "without taking reasonable precautions to distinguish, etc."

have leaned heavily upon the type of explanatory phrase which presumably distinguishes the defendant by the declaration that he is not connected with the “original” or “genuine" bearer of the name,57 and that which distinguishes the plaintiff by the announcement that the defendant is distinct from, and has no affiliation whatever with, him.

The books are, however, replete with other cases, in which the results were even less satisfactory than those in which the inclusion of an explanatory phrase was directed. It has, for example, been held sufficiently distinguishing if a word describing a line of business, the first name, a second family name, initials, or even a suffix, is added to the famous name, or even if the defendant merely avoids a plural or possessive form of the name.

The Chickering and Perkins cases point the way to a more realistic resolution of the thorny problem presented by the family name. In the Chickering case58 the court ordered the defendant to adopt a uniform and fanciful name, such as "Acoustigrande," for all its pianos, while permitting the use of its own name, in smaller type, merely for the purpose of indicating by whom the pianos were made. Thus the court recognized and protected the exclusive right of the plaintiff to the secondary meaning of the name and still allowed the defendants to "use the common word in its common meaning."59 In the Perkins case,60 the court enjoined the defendant from every trade-mark use of the name Perkins, but allowed the defendant to use the firm name H. K. Perkins & Co.

The law differs with respect to corporate names. The choice of such a name is the result of a deliberate act of the incorporators, and there is patently no commercial necessity to justify the adoption of the name of an individual.61 "The name given to a corporation is an artificial and impersonal thing which can be selected from an entire vocabulary of names."62 Therefore, the rule that one may use his own name in business even though such a use would prove detrimental to a previously established business cannot be invoked to justify the use of a corporate name of which an individual's name is a part.

The same line of reasoning should be equally applicable to partnerships.63

* In Nestor Johnson Mfg. Co. v. Alfred Johnson Skate Co., 313 Ill. 106, 144 N. E. 787 (1924), reversing 229 Ill. App. 549 (1923), the court modified such an injunction by deleting the word “original," the effect of which had compelled the defendant to slander his own goods. See Note, 38 HARV. L. REV. 405 (1925).

58 Chickering v. Chickering & Sons, 215 Fed. 490 (C.C.A. 7th 1914).

50 Id. at 495.

Henry Perkins Co. v. Perkins, 246 Mass. 96, 140 N. E. 461 (1923).

61 Chas. S. Higgins Co. v. Higgins Soap Co., 144 N. Y. 462, 39 N. E. 490 (1895), reversing 71 Hun 101, 24 N. Y. Supp. 801 (1893).

62

De Long v. De Long Hook & Eye Co., 32 N. Y. Supp. 203, 206 (1894), modified, 89 Hun 399, 35 N. Y. Supp. 509 (1894).

68 Tomsky v. Clark, 73 Cal. App. 412, 238 Pac. 950 (1925); Rubel v. Allegretti Chocolate Cream Co., 177 Ill. 129, 52 N. E. 487 (1898). In Frazier v. Dowling, 198 Ky. L. Rep. 1109, 39 S. W. 45, 46 (1897), the plaintiff, famous in connection with the name "Waterfill & Frazier Whiskey," brought action against two partners, Waterfill and Frazier, who had discarded their originally unobjectionable business name and changed to "Waterfill & Frazier, Distillers." The court found "that this combination [did not represent] the name of either of the partners in the new concern. If the sole object in using this combination was to tell the truth . . . it does not do so any more than did the discarded

...

III

CONCLUSION

Despite the fact that the concept of infringement is as old as trade-mark law, and that it figures in almost every trade-mark opinion-and there have been many-it is apparent that it did not spring forth full-born. It is indeed still an extremely volatile concept, which varies with human ingenuity. Precedent in the law can be stultifying if applied blindly, and thus the virtue turned to vice. It is to be hoped that our courts can avoid the temptation to compress that concept into welldefined molds and can shape it as the potter shapes his clay to the job before him. brand 'G. G. Frazier & Company,' or 'J. M. Waterfill & Company.'" See also Dr. A. Posner Shoes, Inc. v. Posner, 10 T. M. Rep. 118, 119 (N.Y. Sup. Ct. 1920), where two former employees, Posner and Schwartz, formed a partnership; the defendants were enjoined "from placing that mark in any shield, or with a lattice design, or in which the word 'Posner' shall appear separate from the word 'Schwartz' or in larger or more conspicuous lettering than the word 'Schwartz' or in a different line from that word, or continuing any method of business calculated to deceive." International Silver Co. v. William H. Rogers Corp., 67 N. J. Eq. 646, 60 Atl. 187 (1905), reversing 66 N. J. Eq. 119, 57 Atl. 1037 (1904). See also Goldberg v. Goldberg, 159 Ga. 761, 126 S. E. 823 (1925), where, though two of the three defendant partners bore the name "Goldberg," its use was enjoined entirely. But compare Lucile, Ltd., New York and Paris v. Schrier, 191 App. Div. 567, 181 N. Y. Supp. 694 (1920). The plaintiff was well known to the public as "Lucile," and the defendant partnership of Lucille Schrier and Byrdie Levy used as its trade name "Lucille-Byrd." Defendants were permitted to use the name of Lucille Schrier alone or in conjunction with the other partner's name in letters of the same style, type, and conspicuousness, the court citing Bernhard v. Bernhard, 156 App. Div. 739, 142 N. Y. Supp. 94 (1913); World's Dispensary Medical Ass'n v. Pierce, 203 N. Y. 419, 96 N. E. 738 (1911), modifying 138 App. Div. 401, 122 N. Y. Supp. 818 (1910). See also Ralph Bros. Furniture Co. v. Ralph, 338 Pa. 360, 12 A. 2d 573 (1940). Cf. also L. E. Waterman Co. v. Modern Pen Co., supra note 56.

FEDERAL AND STATE REGULATION OF

TRADE-MARKS

BARTHOLOMEW DIGGINS

The Lanham Trade-Mark Act of 19461 is the result of years of work by business, bar, and Congress to secure comprehensive and uniform legislation in the field of trade-marks and unfair competition.2 Prior to the effective date of the Lanham Act, the law of trade-marks and unfair competition was a patchwork of federal and state law. It is the purpose of this paper to examine the extent to which the Lanham Act has brought order and uniformity to the unsettled and unsatisfactory conditions which preceded its enactment.

I

HISTORICAL BACKGROUND

The law of unfair competition, of which the law of trade-marks is a part, is necessarily a flexible and expanding field. The need for effective protection against unfair competition expands and diversifies as business itself expands and diversifies; unfair trade tactics are limited only by the ingenuity of the unfair trader. Historically and necessarily, the courts have lagged in affording protection against unfair trading, largely because they have had no official declarations of policy to guide them, and standards of business behavior could be formulated only by trial and error after the damage was done. As one authority puts it,

Experience shows that by the time the judicial machinery arrives at a place where the pirate was yesterday, ready to deal with him, that elusive person has moved forward and is still a little ahead-at a place where the courts will not reach until tomorrow-and is there engaged in doing something which will enable him to advantage himself at someone's else expense in some manner hitherto unthought of.

B.S. in E.E. 1929, Catholic University of America; LL.B. 1933, Georgetown University. Member of the District of Columbia bar. Examiner, United States Patent Office, 1929-34; Special Assistant to the Attorney General, 1941-46.

1

Act of July 5, 1946, 60 Stat. 427, 15 U. S. C. §1051 (1946).

2 The term "unfair competition" is a misnomer since many acts not strictly competitive are actionable. In HARRY D. NIMS, THE LAW OF UNFAIR COMPETITION AND TRADE-MARKS (3d ed. 1936), seven pages (16 to 22) are devoted to "Definitions of Unfair Competition," and in WALTEr Derenberg, Trade-Mark PROTECTION AND UNFAIR TRADING (1936), the more accurate term "unfair trading" is used to describe the cause of action. However, by widespread usage, the term "unfair competition" has acquired legal standing, and will be used in this paper with the understanding that it includes acts and practices not strictly competitive.

* July 5, 1947.

'Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 413 (1916); United Drug Co. v. Rectanus, 238 U. S. 90, 97 (1918).

B Handler, Unfair Competition, 21 Iowa L. Rev. 175, 179 (1936).

• Rogers, New Concepts of Unfair Competition under the Lanham Act, 38 T. M. Rep. 259, 270 (1948).

The development of the substantive law of unfair competition has been primarily by judicial decision. Both state and federal courts have afforded relief against unfair competition. Vested trade-mark rights have been recognized and protected by the courts of all states irrespective of state or federal registration, and, as might be expected, the decisions of the different state and federal courts are not consistent or uniform.8 As business grew and developed, this inconsistency and lack of uniformity became disturbing to businessmen, so that when the first federal law relating to trade-marks was held unconstitutional,10

Congress was flooded with proposed new legislation on the subject, even including a resolution for an amendment to the Constitution of the United States granting to Congress express power to regulate the use of trade-marks.11

Most of the states have had laws providing for the registration of trade-marks1? and have afforded some protection for marks so registered,13 but state law is necessarily ineffective to protect interstate business. Registration under state laws was not essential even in so far as local business was concerned. The Association of the Bar of the City of New York studied the matter of state registrations, and, as a result of its study, issued a bulletin which contains the following statement:

Vested trade-mark rights are recognized and protected by the courts in all the states irrespective of state or federal registration. Therefore the statement... that state registration is necessary in order adequately to protect trade-mark rights is not true. State registration is helpful only in exceptional cases and the trade-mark owner should not be burdened with the large expense involved in securing such registration except in unusual cases.14

Not only were the trade-mark registration laws of the states ineffective, but the Committee on Patent, Trade Mark and Copyright Law of the American Bar Association described most of such laws as "pernicious."15 Referring to certain trade-mark registration laws pending in New York, Maryland, and Nevada, this committee said that they "would provide work for lawyers and state registration specialists but would be detrimental to trade-mark owners and to the public."16

Even the common law of the states was uncertain and unsatisfactory, largely because of the scarcity of precedents. Trade-mark and unfair competition cases 'Handler, supra note 5, at 179.

*For a striking example of this divergence on substantially similar facts, cf. Putnam Nail Co. v. Bennett, 43 Fed. 800 (C. C. E. D. Pa. 1890), with Putnam Nail Co. v. Dulaney, 140 Pa. St. 205, 21 Atl. 391 (1891).

9 Act of July 8, 1870, 16 Stat. 198.

10 Trade Mark Cases, 100 U. S. 82 (1879).

11

Rep. No. 3147 on H. R. 16560, 58th Cong., 3d Sess. (1904), reprinted in 17 J. PAT. OFF. SOC'Y 120, 123 (1935).

12 17 J. PAT. OFF. Soc'Y 120, 133 (1935).

13

1946).

WALTER DERENBERG, PREPARING FOR THE NEW TRADE MARK LAW (Research Institute of America,

"Bulletin Regarding Circulars Recently Issued by Certain Self-Styled “Trade Mark Specialists," reprinted in 17 J. PAT. OFF. Soc'Y 740, 741 (1935).

15 Id. at 736.

16 Id. at 737.