
    EDWIN A. MENEELY and GEORGE R. MENEELY, Respondents, v. CLINTON H. MENEELY and GEORGE H. KIMBERLY, Appellants.
    
      Trade-mm'k—name—right to the me of—Injunction to prevent use of family name — denied except in case of fraud or deceit—Distinction between bequest of good win of business and excVume me of name.
    
    In 1826, Andrew Meneely, the father of the plaintiffs, and the defendant Meneely, commenced the business of hell making at West Troy, and continued therein until 1851, when the plaintiff, E. A. Meneely, became his partner, and so continued until his father’s death in October, 1851, after which, the business was carried on by the plaintiffs. By reason of the skill of A. Meneely and his successors, the bell foundry had acquired a great reputation, the business having been carried on under the names of “ Andrew Meneely,” “ Andrew Meneely & Son,” “Andrew Meneely’s Sons,” and “E. A. & G. R. Meneely.” In 1872, the defendants commenced bell making at Troy, under the name of “ Meneely & Kimberly,” and issued catalogues, resembling in most, but not in all respects, those issued by the plaintiffs. The defendants, by the use of the name “Meneely,” expected and intended to derive a profit and advantage from the good reputation and celebrity in bell founding, given to that name by A. Meneely and the plaintiffs and the use thereof by them is calculated to do so, and does mislead persons not personally acquainted with plaintiffs and defendants, and with the respective locations of Troy and West Troy, and is injurious to the plaintiffs’ business. Held, that the plaintiff’s were not entitled to an injunction restraining the defendants from using the name “ Meneely ” in the business of bell founding at Troy.
    Under such circumstances, a court of equity will not interfere to prevent the use of a family name, in the pursuit of a lawful business, except where there has been fraud or deceit practiced, or where some false or fraudulent device has been employed to injure and interfere with the business of another, and impose upon the public.
    The cases upon this subject examined and distinguished.
    Andrew Meneely, by his will, after making certain specific legacies, devised all the remainder of his estate, both real and personal, to the plaintiffs, charging them with the support and maintenance of his children during the minority of the youngest of them, and with the payment of certain legacies, and he states that in so doing, he has taken into view “that I leave them * * * * conveniences for carrying on a successful business, * * * * and the good-will and custom which it is believed is established and connected vrith it.” Held, (1), that there is a distinction between appropriating the good-will of a business of a deceased father, carried on in a particular locality, and enjoying the benefit of his name and reputation as a man of skill and fair dealing ; (3), that there was nothing in the language of the will, which conferred upon the plaintiffs the exclusive use of the name of Meneely in the business of bell founding.
    Appeal from a judgment in favor of the plaintiffs, entered upon the report of a referee.
    In 1826, Andrew Meneely, the father of the plaintiffs and of the defendant, Meneely, commenced the business of bell making, at West Troy, and continued to carry-on the business until 1851, when the plaintiff, Edwin A. Meneely, became his partner, and the firm continued, as thus composed, until the death of the father in October, 1851, after which the business was carried on by the plaintiffs. Andrew Meneely left a will, by which, after making certain specific bequests, he devised all the remainder of his estate, both real and personal, to the plaintiffs, charging them with the payment of all his debts, and with the support of his children, until the youngest of them living should attain the age of twenty-one years, and with the payment of certain legacies to his children and wife. In the first clause of his will, he states that, in making this distribution of his estate and charging the plaintiffs with the payment of these legacies, he has taken into view “ that I leave them in control of an ample capital, and with real estate constituting ample grounds, and also implements and conveniences for continuing and carrying on a successful business, which I have been favored in establishing by.many years of toil and industry, and the goodwill or custom which, it is believed, is established and connected with it, out of which business, if prosecuted by them with prudence and economy, which I have reason to believe they will use, I hope and confidently expect they will, they will have ample means to meet the payments I have charged upon them.”
    The plaintiffs complied fully with the conditions contained in the will. In the father’s lifetime, and up to the time when Edwin became a partner, the firm style was “ Andrew Meneely,” but on Edwin’s becoming a partner, it was changed to “ Andrew Meneely & Son.” After the father’s death, the firm name was again changed to “ Andrew Meneely’s Sons,” and, in 1863, to “ E. A. & G. E. Meneely,” the present name. In 1811, the defendant, Clinton H. Meneely, one of the children named in the will, associated himself with the defendant, Kimberly, and began the business of manufacturing bells, under the name of “ Meneely & Kimberly,” at Troy.
    This action was brought to restrain the defendants from the use of the name of “ Meneely ” in the business of bell founding at Troy.
    The referee, before whom the action was tried, found that the defendants, by the use of the name of “ Meneely ” in the establishment of their bell foundry at Troy, and in manufacturing and selling bells at Troy,' under the name of “ Meneely & Kimberly,” expected and intended to derive a profit and advantage by reason of the good reputation and celebrity in bell founding, given to that name throughout the country, by the said Andrew Meneely and the plaintiffs, and that the use of the name of “ Meneely ” by the defendant, is calculated to, and does, mislead persons who are not personally acquainted with the plaintiffs and defendants, nor with the respective locations of Troy and West Troy, and the difference between these places, into the belief that the defendants are the proprietors of the “ Meneely Bell Foundry,” carried on by the plaintiffs; and such use of the name, Meneely, is injurious to the plaintiffs’ business.
    The referee decided in favor of the plaintiffs, and directed that an injunction should issue, restraining the defendants from using the name and designation, “Meneely,” in the business of bell founding at Troy.
    
      
      Irving Browne, for the appellants
    Courts have no power to restrain a man from honestly using his own name in his own business. (Amoskeag Manuf. Co. v. Spear, 2 Sand., 607; Clark v. Clark, 25 Barb., 79 ; Howe v. Howe Machine Co., 50 Barb., 236; Faber v. Faber, 49 Barb., 357; James v. James, L. R., 13 Eq. Cas., 421; Brown’s Trade-marks, pp. 402, 143.)
    
      Edgar L. Fursmcm, for the respondents,
    cited, as to the right to the use of the name Meneely, Fetridge v. Wells (13 How., 385); Stokes v. Landgraff (17 Barb., 608); Howard v. Menee (1 How., App. Cases, 558); Congress and Emp. Spring Co. v. High Rock Cong. Spring Co. (57 Barb., 526); S. C. (10 Abb. [N. S.], 348); Newman v. Alvord (51N. Y., 189); Howard v. Henriques (3 Sand. S. C. R., 725); Churton v. Douglass (1 H. R. V. Johns., 176); Stone v. Carlan (3 Mod. Law R., 361); Davis v. Kendall (2 R. I., 566); Ainsworth v. Walmsley (44 L. J. R. [N. S.], 352); Perry v. Truefitt (6 Beavan, 66); Holmes v. Holmes (37 Conn., 278); Scheitzer v. Adkins (46. L. J. R., 37 [N. S.], 847; Laws of 1863, chap. 209).
    A brief, on behalf of the respondents, was also filed by Hon. John H. Reynolds.
    
   Miller, P. J.:

The plaintiffs claim that the use of the defendants’ firm name of Meneely & Kimberly,” in conducting their business of bell founding in the city of Troy, is an infringement upon the plaintiffs’ right to use the name of Meneely,” as a trade-mark in their business at West Troy, which was established by the father of the plaintiffs, and of the defendant “ Meneely,” and the plaintiffs themselves in the same business, and has become a trade-mark of great celebrity and value. The law favors the protection to manufacturers, of any trade-mark, name or symbol, which distinguishes their goods from others, so far as the ownership is concerned, and will interpose its strong arm to restrain those who attempt to appropriate this species of property by fraud or improper practices, to the detriment and injury of those who have acquired a right to the same.

In the case at bar, the defendants have not used the firm name of the plaintiffs, or any name by which it has been heretofore known or designated, but the name of “ Meneely & Kimberly,” as constituting a copartnership while engaged in the same business as the plaintiffs have, for a long period of time, carried on. The objection is to the employment of the name of “Meneely” in connection with the sarpe business as the plaintiffs, at the place where the defendants are located, which is the city of Troy, on the opposite side of the Hudson river from where the" plaintiffs are situated.

Although the complaint alleges that the defendants established a bell foundry with the intention to injure the plaintiffs, and to deceive the public, the referee does not find any such intent, or that the defendants were guilty of any fraud, dishonesty or deceit. It is true, he finds that the defendants expected and intended to derive profit and advantage from the use of the name employed, and that the name of “ Meneely ” was calculated to, and did mislead persons, not personally acquainted with the parties or the several localities, and is. injurious to the plaintiffs’ business of bell making, but no intentional wrong is attributed to the defendants. As there was no bad intent found as a matter of fact, the use of the name must, necessarily, have been innocent.

The question then arises, whether the defendants are liable to be enjoined without having done any wrongful act, and merely because they assumed to use the name of one of them in connection with a business, in which the ancestor of that defendant and of the plaintiffs had been engaged, and which, by a life of industry and toil, and by skill, he had made profitable, and an invaluable inheritance for his posterity. The right to the enjoyment of a good name, personally, or in connection with a business established by the labor and integrity of an ancestor, is an inestimable privilege, which cannot be too highly prized. As a general rule, every individual is entitled to the full benefits and advantages which such a privilege confers, and should not be deprived of the same by the interference of the courts, except in extraordinary cases, and for the most cogent of reasons. Nor does there appear to be any justice or equality in allowing some members of a family, whose paternal name and business reputation has been transmitted to them, to enjoy an entire monopoly of its fruits, to the exclusion of others. The defendant, Clinton H. Meneely, claimed the right to profit from the name which he inherited, and the good reputation which his father had earned in the business of bell founding. He was open and above board in declaring his intention thus to derive advantage, and formed a copartnership and conducted his business with the expectation and belief that profit would accrue .to him, by reason' of the good name and celebrity which had attended his father’s successful career. I am inclined to think that, in this respect, he committed no wrong, and that he had a perfect right to use his own name in his own business, even although that name was the same as the one used by the plaintiffs, and the business precisely of the same character. It would, it seems to me, be extremely inequitable to allow some members of a family to deprive others of the rights acquired by a common inheritance, and to say that the family name should not be employed by one, because it might interfere with others—in other words, to deprive a man of the right to earn a livlihood in the name of his father, and in the pursuit of the only business which that father had been engaged in, or the son had been instructed to follow. The law does not sanction any such injustice, and, so far as I have been able to discover, none of the reported cases go to the extent of holding that a court of equity will interfere to prevent the use of a family name in the pursuit of a lawful business, under circumstances similar to those which are presented in the case at bar.

In most of the cases, and I am inclined to think there is no exception to this rule, the power of the court has only been interposed where there has been fraud or deceit practiced, or where some false or fraudulent device has been employed to injure and interfere with the business of another, and to impose upon the public. A brief reference to some of the leading cases which are relied upon, will, I think, sustain this view. In Sykes v. Sykes, the action was to restrain the defendant from the use of the words, “ Sykes’ Patent,” in the manufacture of powder flasks. The declaration alleged fraud and deceit. The plaintiff had a patent which had been adjudged invalid, on account of a defect in the specifications, but the plaintiff afterward continued to use the same mark on his manufactured articles. The defendants imitated his, plaintiff’s, stamp, and the goods were sold by retailers as articles manufactured by plaintiff. A verdict for the plaintiff was sustained upon the ground that the substance of the declaration was proved, and that the goods were sold for the express purpose of being resold as goods of the plaintiff’s manufacture. The case was not analogous to the one at bar, for it showed the entire appropriation, verbatim, of a trade-mark, and was decided upon the ground that there was fraud. In Croft v. Day, the defendant, Day, having obtained the consent of one Martin, to use his name, set up the trade of a blacking manufactory, with labels having a general resemblance to those of the original firm of Day & Martin, whom the plaintiff represented. The defendant was a nephew of Day, one of the members of the old firm, who was deceased. And the Master of the Dolls held that, while the defendant had a right to the use of his name, he had no right to use it at the expense of Day’s estate, or in such a way as to deceive and defraud the public, and to obtain for himself, at their expense, an undue and improper advantage. The fraud in this case was quite manifest, not only in using the name of Martin, who was not a member of the firm, and the imitation of labels of the old firm, but in substituting Holborn Hill for High Holborn, both meaning the same street, as the place of business of Day. In Holloway v. Holloway, the plaintiff sold a medicine as the “ Holloway’s Pills,” and the defendant, his brother, Henry Holloway, commenced selling pills as “ H. Holloway’s Pills,” in boxes similar to the plaintiff’s, with a view of passing off his pills as plaintiff’s. It appeared that the defendant had given the printer copies of plaintiff’s directions, papers, etc., with the design of imitating them, and the decision was placed upon the ground that the defendant intended to deceive the public, and make them believe that he was selling the plaintiff’s pills. In Burgess v. Burgess, an injunction was refused as to the use of the name of an article, and the doctrine is laid down, that where two persons have the same name, it does not follow, because the defendant sells goods under his own name, and the plaintiff has the same name, that he is selling them as the goods of the plaintiff.

Without examining particularly all the English cases, I think it may he said that in none of them, is a party restrained from the use of his own name,, unless that party is brought within the rule already laid down. The same remarks will apply to the American cases. And the right to use the name of a person, although it was the same as another, has been upheld. In Clark v. Clark, a party was restrained from using the same trade-mark as another, but it" was said that two persons of nearly the same name being engaged in the same business, each, had the undoubted right to use his own name, and to describe the article which he sells by his well-known name. In Faber v. Faber, an injunction was dissolved restraining the defendant from using his own name, although it was the same as the plaintiff’s. And it was said by Sutherland, J., that it is easy to see that this circumstance may be an injury to the plaintiff, but the defendant, Faber, has a right to use his own name.” * * * “ And amy imju/ry which the plaintiff has suffered or may suffer by such use of the defendant Faber’s name, merely, must be viewed as am injury without a remedy A In Howe v. The Howe Machine Company, an injunction was dissolved restraining the defendant from the use of the plaintiff’s name. It was said by one of the judges, that the surname could not be used in such a way as to deceive the public, and deprive the plaintiff of the benefit of the notoriety which his machines had gained; and another concurred upon the ground that there was no fraud upon the plaintiff in the use of the name. In Stonebraker v. Stonebraker, the evidence of an intent to deceive was manifest, and the defendants were enjoined from manufacturing or imitating the plaintiff’s medicines, and from counterfeiting his labels, marks, etc., but no restraint was put upon the use of Stonebraker’s name. In Holmes v. Holmes , there was also a question of fraud, as well as an element of a contract or an estoppel.

While there are cases where the appropriation of a trade-mark which misleads the public, will demand the granting of an injunction, I am not prepared to assent to the doctrine that fraud or a wrongful, intent is to be presumed from the mere fact of using one’s own name, which is the same as that of another, or that a person cannot do so where there is even a tendency to injure another, or to impose upon the public. The true rule is well stated in Wolfe v. Burke, by Gilbert, J., who remarks: A man cannot make a trade-mark of his name to the exclusion of a like use of it by another who bears the same name, if the use by the latter is fair and unaccompanied by any contrivance to deceive.” Brown on Trade-marks, at page 143, lays down the following doctrine: The rule is, that a man cannot turn his name into a trade-mark. Any other rule would lead to the most absurd consequences. There are several dicta the other way; but this must be attributed to a loose habit of speech or a want of acquaintance with the indispensible requisites of the technical mark.” See, also, pages 246- and 314, and pages 329, 402, 403, where numerous cases are cited which sustain this position.

In the cases cited, the degree of similarity and the imitations were far more apparent and distinct than in the case .at bar, and it is worthy of observation and especial attention, that here the defendants only employed the surname of one of them, which one alone is of the same character as the plaintiffs’, or bears any similarity to their name or any of the various cognomens, some forty in all, by which they have been designated by their numerous business correspondents. It would be a far-reaching extension of the powers of a court of equity, to grant an injunction which would protect the plaintiffs in the use of all the different names, by which they have been in the habit of being addressed by their customers. There is no adjudged case, which has protected trade-marks to such an extent, or ever struck out the name of a single member of a firm, because it was similar to another engaged in the same business. The partnership name here, was “Meneely & Kimberly,” and the plaintiffs’ firm name, “E. A. & G. R. Meneely.” And there is no such resemblance as would of itself either tend to deceive the public, or indicate a fraudulent purpose. The name of “ Meneely ” could not have been used with apparently less design to commit a fraud, unless Kimberly’s name was placed ahead of it, which I think was not required.

The location of the defendants’ business at Troy, was not of itself evidence of an attempt to deceive the public, or an interference with plaintiffs’ rights. It was in a different city and county, across a river and some distance from plaintiffs, and the center of a manufacturing business of various kinds, where -there was a market for this kind of manufactured property, and where, at least, one other bell foundry was in existence. If the defendants had no right to locate at Troy, then it would be difficult to prescribe the limits within which they could establish a business. If distance is to be considered, then they might be driven not only from the immediate vicinity of the plaintiffs, but beyond the limits where the name of Meneely was known or had acquired a reputation. The referee has found that the catalogues issued by the defendants, in the order in which it treats of bell founding and other matters, is in most, if not all respects like the plaintiffs’ catalogues, and the illustrations, in most instances, resemble, but in some instances are strikingly different, and that the language is different. The similarity is certainly not very marked, and not so distinct as to make it appear that there was an intention to appropriate the plaintiffs’ work for the benefit of the defendants. In presenting a subject of this character and a business of the same nature, it is not difficult to see that there must necessarily be strong resemblances in many points, and hence it is not entirely clear that an infringement has been made upon the plaintiffs’ rights in this respect. That the illustrations of bells are similar, is by no means strange, as they are very much alike in most of their leading features, and it is not claimed that the plaintiffs enjoyed an exclusive right to manufacture any of the various kinds of bells, of which illustrations are given, as against other persons engaged in the same kind of business. It would be impracticable to illustrate certain kinds of bells which are alike, without marked resemblances. Take for instance the great bell of Moscow, illustrations of which must necessarily be alike, in order to present an accurate representation of the same. The same remark will apply to most kinds of church, as well as other bells. But the plaintiffs claim nothing in their complaint on this account. They do not allege any imitation of plaintiff’s trade-mark, by impressing or making the same upon the defendant’s bells, nor any imitation of the plaintiffs’ catalogue, or ask relief for any such reason. In fact, a catalogue or' advertisement cannot constitute a trade-mark. The plaintiffs’ counsel insists that Clinton H. Meneely, by the acceptance of the benefits and acquiescence in the terms of his father’s will, is estopped in equity from appropriating the reputation founded on the good-will of his father’s business, for his own benefit. There is quite a distinction between appropriating the good-will of the business of a deceased father, carried on at a particular locality, and enjoying the benefit of his name and reputation as a man of skill and fair dealing, in the business in which he was engaged; and there is, in my opinion, nothing in the language of the will, which confers upon the plaintiffs the exclusive use of the8 name of Meneely in the business of bell founding, or which precludes the defendant, Meneely, from engaging in the same kind of business in another locality. It should be a clear and explicit provision, which would preclude a child from the enjoyment of his father’s name and fame, and from earning a livelihood within the limits where such reputation was known and acknowledged. No such condition is made in the will, by which Clinton H. Meneely surrendered any right which he had, by the acceptance of the bequests, made for his benefit; nor is any such intention manifested by the testator. The bequest to Clinton was unconditional, and without any restriction upon him. In fact, he was, at the time of his father’s decease, an infant, and it does not appear that the provision, in his behalf was any more than an equal share of the large and valuable property, most of which he had given to the plaintiffs.

The intention, therefore, to confine the use of the testator’s name to the plaintiffs, is not supported by evidence, and is not to be inferred from the facts and circumstances presented. Even if the testator had a right to confer the exclusive right to the use of his own individual name, it may well be doubted whether his proprietorship extended so far as to prevent his son from the fair and honest employment of his own name in the prosecution of a lawful business in the manufacture of bells. As long as no fraud or deceit was practiced, or false or fraudulent deceit resorted to, so as to directly interfere with the plaintiffs’ business, or to deceive or defraud the public, the defendants were justified, and cannot be restrained by the interposition of a Court of Equity. The referee was clearly in error in his conclusion, and the judgment must be reversed and a new trial granted, with costs to abide the event.

Present—Miller, P. J., Bocees and Boardman, JJ.

Judgment reversed and new trial ordered, costs to abide the event. 
      
       Corwin v. Daly, 7 Bosw., 233.
     
      
       3 B. & C., 541.
     
      
       7 Beav., 84.
     
      
       13 Beav., 209.
     
      
       17 Eng. Law & Eq., 257.
     
      
      See Rodgers v. Nowill, 5 Man., Gr. & Scott, 109; Taylor v. Taylor, 23 Eng. L. & Eq., 281; Perry v. Truefitt, 6 Beav., 66; Scheitzer v. Utkins, 46 E. L. J. R. (37 N. S.), 847.
     
      
       25 Barb., 77.
     
      
      
         49 Barb., 357.
     
      
       50 Barb., 236.
     
      
       33 Maryland, 252.
     
      
       37 Conn., 278.
     
      
       Amoskeag Man. Co. v. Spear, 2 Sand., 599.
     
      
       7 Lans., 151, 156.
     
      
       Candee v. Dure, 54 Ill., 439.
     