U. S. Mercantile Reporting Co. v. U. S. Mercantile Reporting & Collecting Ass'n

Majority

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U. S. MERCANTILE REPORTING COMPANY v. U. S. MERCANTILE REPORTING AND COLLECTING ASSOCIATION.

N. Y. Superior. Court, Special Term ;

February, 1888.

Headnote

Names.] The name of the defendant in this case,—Held, a colorable imitation! of that of the plaintiff, such as should be enjoined.

Laches. J • The withdrawal of the prayer for an accounting in an action to enjoin the infringement of plaintiff’s name,—Reid, to remove objections to plaintiff’s case on the ground of laches or acquiescence.

Injunction.] On granting an injunction in such a case, the time when it is to take effect may be-postponed to enable defendant to obtain judicial leave to change its name.'

Plaintiff brought this action to enjoin defendant from" «using the name it had adopted.

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It appeared that the plaintiff company was incorporated in 1875, and has since been doing business under the corporate name of the “ United States Mercantile Reporting-Company,” in the making and publishing reports of the financial standing and credit of persons doing business in the cities and elsewhere of the United States. In that, complaint they allege that William G-. Jones and others, but-particularly Jones, knowing the value of plaintiff’s business, on or about December, 1887, assumed the name of the “ United States Mercantile Reporting and Collecting Association,” with intent to deceive and mislead the public in to-believing that plaintiff and defendant were the same corporation, and to profit thereby, and plaintiff demanded that defendants be enjoined from using said assumed name, etc.,, and that defendants account for and pay over to plaintiffs-all profits realized by them in their business. Defendants, in their amended answer, alleged the existence in 1872 of an unincorporated association, transacting a similar business to that of the plaintiff, under the name of the “ United States Reporting and Collecting Association of Chicago,” the defendant Jones being a member and agent of said firm, and that ho was well known to plaintiff. That in March, 1881, defendant Jones and others commenced business throughout the United States, under the name of the- “ United States Reporting and Collecting Association,” the association being unincorporated and carrying on a business different to that of the plaintiff and similar to that, now carried on by defendant. That under said name, Jones,, with the full acquiescence and knowledge of the plaintiff, built up a large and flourishing business. That on or about. September 13, 1887, defendant became incorporated, and on September 28, purchased from said Jones the business and good-will of said company, said purchase being in good faith and in reliance upon the acquiescence of the said plaintiff in the use of each name. It was further alleged . that plaintiff assumed its name for the purpose of obtaining customers, etc., of the defendants predecessor, and had

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obtained customers, etc., of the defendant by representing itself to be the same association as defendant.

Defendant contended that plaintiff having permitted, without protest or interference, the defendant’s assignor to use the name of the United States Mercantile ¡Reporting and Collecting Association, and under that name to build up a large, lucrative and flourishing business, has acquiesced in the use of said name and is guilty of laches and estopped from disputing the defendant’s right to use said name.

Kelly & Macrae, attorneys for plaintiff.

Roger Forster (Benedict S. Wise, attorney), for defendant.

It seems to me that the name under which the defendant was incorporated and is doing business is such a colorable imitation of that of plaintiff’s that an injunction should be granted restraining its continuance.

The cards and billheads in evidence show a disposition •on the part of the defendant to make unduly prominent that portion of its corporate name which is most similar to the name of the plaintiff. Certain it is that the use by the •defendant of its name has led to confusion in the delivery of the mail matter addressed to the parties in the, action.

Upon the laches or acquiescence of the plaintiff much stress is laid as a reason why this application should be denied. The license given, if any, was to Jones, and under the circumstances, as such, is revocable. The plaintiff’s prayer for an accounting has been withdrawn, and with its withdrawal disappears all equitable right in the particular case, to have the acquiescence or laches complained of made a reason for the denial of this application.

No reason has been shown which satisfies me that the revocable nature of the license, if any, given to Jones should be disregarded by the court and the license held irrevocable. It is not difficult to conceive a case where

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acquiescence on the part of plaintiff under certain attendant circumstances would prevent the interference of a court of equity thereafter in his behalf, but this is not such a case. 2sTo fraud upon the public'will arise, nor is the case so aggravated a one as the defendant would have the court believe. The serious consequences which it claims to fear must be due to excessive timidity, for I cannot convince myself that the loss of the name it has assumed will cause the destruction of its business. The evidence as to the character of the business is such as to preclude any such conviction. The name assumed by the defendant can without difficulty be changed, and no great period of time need elapse before such a change can be made. Our statutes have provided a. method for the purpose.

I think, however, that in view of the action of the plaintiff in the past, and the probable injury that will result-to the defendant by a too summary disposition of the question, an injunction should be granted restraining defendant, from using, after May 1st, next, the name it now has.

In the meantime defendant, if it so desires, can act without serious damage in the premises.

' The objection that the complaint does not state a cause of action against the defendant and does not comply with section 1775 of the Code of Civil Procedure, I have conr sidered and regard as untenable.

Decree to be settled on notice.