International Silver Co. v. Oneida Community, Ltd. (73 F.2d 69, 1934)

AUGUSTUS N. HAND, Circuit Judge.

This suit is to enjoin the use of the name “Rogers” on silver-plated fatware and other tableware, as well as to enjoin the use of various trade-marks and to restrain unfair competition.

Complainant claims to be the successor of the original Rogers firm that began business in 1847 and attained a high reputation in the manufacture of silver plate. We think this position cannot be sustained so far as it seeks exclusive rights derived from the three brothers, William, Simeon S., and Asa H. Rogers, who began business together in Connecticut in 1847 and established a high reputation as faithful craftsmen in making table silverware by an electroplating process. The three Rogers stayed together until 1856, when William left the corporation which the brothers had formed, known as Rogers Bros. Manufacturing Company. He then joined others in a corporation known as Rogers Smith & Co., which manufactured silver-plated ware under the mark “Rogers Smith & Co. A 1.” In 1862, Rogers Smith & Co. merged with the Rogers Bros. Manufacturing Company and under the marks “(Star) Rogers Bros. A 1,” “Rogers Brothers,” “Rogers Bros.,” and “Rogers Smith & Company” continued the business until the concern became insolvent in 1862 and the assets, other than the good will and trade-marks, were distributed by the Connecticut probate court. Shortly after the failure, a new corporation called Rogers Smith & Co. was organized (in which no one named Rogers was interested), which was sold out to Meriden Brittania Company in 1863. About November, 1862, the .original three Rogers brothers entered the employ of the Meriden Company without, however, obtaining any proprietary interest in that corporation. It was agreed that the company should not sell goods stamped with the name “Rogers” unless they bore the name or trade-marks of “Rogers Brothers.” The goods were marketed by the company under the name “1847 Rogers Bros. A 1.”

Asa H. and Simeon S. Rogers had left Rogers Bros. Manufacturing Company in 1858 and, before going into the employ of the Meriden Company, had established a business of their own at Waterbury, Conn., under the name of Rogers & Bro., using the trade-marks “Rogers & Brother A 1,” “(Star) Rogers & Brother A 1,” “(Star-) Rogers & Bro. A 1,” “(Star) R. & B.”

In 1864, William Rogers left the employ of the Meriden Company and went into that of "William Rogers Manufacturing Company in Hartford, a partnership in which neither he nor any one named Rogers over owned an interest. His son "William Rogers, Jr., also associated himself with the concern. The trade-marks used by it were “(Anchor) William Rogers & Son AA,” “William Rogers & Son,” “1865 William Rogers Mfg. Co. AA,” “William Rogers Mfg. Co.,” “Rogers Nickel Silver,” “(Anchor) Rogers (Anchor)

In 1868, Yfilliam Rogers again entered the employ of the Meriden Company and his son went with him.

In 1871, Asa Rogers and one Watrous organized Rogers Cutlery Company.

In 1878, Simpson, Hall, Miller & Co. was formed at Wallingford and employed William Rogers, Jr. It used the mark “(Eagle) Wm. Rogers (Star).”

In 1868, Cephas, Gilbert, and Wilbur F. Rogers, all being unconnected with the old Rogers family, founded a, firm at Meriden under the name of C. Rogers & Bros. They used the trade-marks “C. Rogers & Bros.” and “C. Rogers & Bros. A 1.” It did not begin to manufacture silver plate until 1883.

In 1886, the Rogers & Hamilton Company was formed in Watorbnry, with which none of the Rogers brothers was connected. It did no-t manufacture silver plate, hut only hollow ware. Indeed, the original Rogers had all died; William Rogers in 1873, Simeon in 1874, and Asa hi 1876.

It will be seen that prior to 1394, when William A. Rogers, who is defendant’s predecessor, began business, the following concerns were in the business of manufacturing silver plate: Rogers & Bro., deriving title from Asa and Simeon Rogers in 1858; Meriden Brittania Company, deriving title from all three of the original brothers in 1862; William Rogers Manufacturing Company deriving title from William Rogers in 1865; Rogers Cutlery Company deriving title from Asa Rogers.

In addition to the foregoing, the following concerns: C. Rogers & Bros. (1868), Simpson, Hall, Miller & Co. (1878), and the Rogers & Hamilton Company (1886) — were in competition with the complainant’s predecessors in 1894 when William A. Rogers, defendant’s predecessor, entered the field.

In 1899, the complainant was organized and has purchased the business of the foregoing concerns. It seems plain that at that time the name “Rogers” did not designate any particular source of manufacture. The first four concerns could trace back to’the three brothers and possibly this was true of Simpson, Hall, Miller & Co. also, because of the connection with it of William Rogers, Jr., who had worked closely with his father in the William Rogers Manufacturing Company. But in Wm. Rogers Mfg. Co. v. Simpson, Hall, Miller & Co., 54 Conn. 527, 9 A. 395, 401, it was held that the William Rogers Manufacturing Company’ could not prevent Simpson, Hall, Miller & Co. from using the word “Rogers.” The court said in that decision that: “The plaintiff has no greater right to prevent the misleading of consumers in the matter of calling the goods of both ‘Rogers goods,’ than it has to prevent the same result in the matter of using identical names accompanied by differing symbols as stamps.” It was also held in a suit by Rogers & Brother v. C. Rogers et al., 53 Conn. 121, 1 A. 807, 5 A. 675, 55 Am. Rep. 78, that the former could not enjoin C. Rogers & Bros, from using the “name of ‘Rogers’ merely, upon their goods.” As regards Rogers & Hamilton Company, another interloper, there is no proof that any attempt was made to stop its sales of “Rogers” goods, or that any of the original Rogers concerns objected to its use of the name. Thus, when the complainant came into the field, there were at least two, and probably three, concerns which had been using the name for years, with no proof that their workmanship was equivalent to the high order of plate that had made the silver of William, Simeon S., and Asa H. Rogers famous, or that they claimed to derive their title from the original brothers.

In 1894, William A. Rogers, defendant’s predecessor, began selling silverware in New York. He started a fourth “Rogers” business in electroplated ware in competition with the companies deriving a commercial heirship from the three brothers and was followed in 1900 by a concern known as Simeon L. & George H. Rogers Company, organized under the laws of Maine, by two sons of Simeon S. Rogers, with a factory at Hai-tford, Conn.

In 1901, William A. Rogers incorporated his business and was engaged in substantial competition with the complainant in silver plate until the business was sold out to the defendant in 1929. It used the name “Rogers” as well as various special trademarks. In 1918, it had acquired the business of Simoon L. & George II. Rogers Company.

The complainant bought out all of the concerns that were competing with it when it started! business, namely, Rogers & Bro., Meriden Brittania Company, Wm. Rogers Manufacturing Company, Rogers Cutlery Company, Rogers Smith & Co., Simpson, Hall, Miller & Co., and the Rogers & Hamilton Company, but before the defendant entered the field by the acquisition of Wm. A. Rogers, Limited, there were outstanding the business of Wm. A. Rogers, and for twenty years afterwards that of Simeon L. & George H. Rogers Company. This makes it clear that the name “Rogers” simpliciter never meant solely the complainant’s goods.

It is argued that complainant established by litigation that the name “Rogers” did mean its goods, but this is not so. This is first sought to be shown by the suits brought by Wm. Rogers Manufacturing Company, one of.its predecessors. In Rogers v. Wm. Rogers Mfg. Co. (C. C. A.) 70 F. 1019, a preliminary injunction in its favor was reversed by this court, and the suit was later dismissed for lack of prosecution. In Wm. Rogers Mfg. Co. v. Wm. A. Rogers (C. C.) 84 F. 639, affirmed (C. C. A.) 95 F. 1007, Judge Laeombe denied a motion for1 a preliminary injunction, though William A. Rogers was advertising his goods as “Rogers goods” and the “genuine Rogers goods.” In 1917, the suit was dismissed for lack of prosecution. In International Silver Co. v. Simeon L. & George H. Rogers (C. C.) 110 F. 955, Judge Shipman, in 1901, granted a preliminary injunction to the complainant restraining the defendant in that suit from using such terms as “the only Rogers Bros.,” as well as “Rogers” and “Rogers Bros.,” with or without a preceding or succeeding name or symbol, but did not enjoin the use of the corporate name. He found that the defendant had selected the name “Rogers” unnecessarily for purposes of unfair competition, and it is to be remembered that the defendant there had only just begun business in 1901 and had really built up no equity in its favor. The suit never came to final hearing, and in 1913 was dismissed for lack of prosecution. Under all the circumstances, the decision has no important bearing on the present controversy. Likewise in International Silver Co. v. Rodgers Bros. Cutlery Co. (C. C.) 136 F. 1019, a mere interloper had selected the name “Rodgers” to take away the complainant’s trade. There an injunction was granted, but merely on the ground of fraud, and not because the name “Rogers” had acquired a secondary meaning. The scholarly opinion of Justice Swayze in the New Jersey Court of Errors and Appeals in International Silver Co. v. W. H. Roger’s Corp., 67 N. J. Eq. 646, 60 A. 187, 189, 110 Am. St. Rep. 506, 3 Ann. Cas. 804 is to the same effect. There a mere interloper having no standing as a silversmith sought to capture complainant’s trade. The court held that the fact that William A. Rogers, defendant’s predecessor, “seems to have established the right to use the name,” did not “enlarge” the rights of the interloper. See, also, International Silver Co. v. Rogers, 72 N. J. Eq. 933, 67 A. 105, 129 Am. St. Rep. 722.

That International Silver Company had no exclusive right to the word “Rogers” simpliciter was held in Wm. A. Rogers v. International Silver Co., 34 App. D. C. 410, and by Judge Mantón in the District Court in Wm. A. Rogers, Ltd., v. Rogers Silverware Redemption Bureau, 247 F. 178.

It is argued that the complainant abandoned 'any right it may have had to use the name “Rogers” simpliciter, and that between 1900 and 1929 it advertised urging the public to disregard that word in buying Rogers’ silverware and seek more specific marks. Among the phrases used for this purpose were:

“Don’t say Rogers, say Wm. Rogers & Son.”

“Not ‘Rogers’ only but ‘1847.’ ”

“There are other Rogers, — remember ‘1847.’ ”

“Remember the number ‘1847’ as well as the ‘Rogers Bros.’ ”

“There are other Rogers. Remember ‘1847.’ ”

“Remember the ‘1847,’ as there are other ‘Rogers.’ ”

“1847 was made part of the trademark to identify the genuine.”

“There are many brands of ‘Rogers’ but there is only one ‘1847.’ ”

“1847 has been the mark that has distinguished the original brand of silver plated flatware.”

“Although there are several makes of Rogers goods there is but one brand of 1847 Rogers Bros.”

“There are other makes of ‘Rogers’ but only one ‘1847’ Rogers Bros.”

This, we think, does not show an abandonment of the right to use the name “Rogers” so far as that right existed, but only an insistence upon special distinguishing marks.

Between the date when complainant started and defendant’s acquisition of the property of William A. Rogers, tlie business of tlie latter grew to a very substantial volume, and it sold goods under brands which in-eluded the word “Rogers” to the amount of several million dollars. While it may not be possible to approximate accurately the amount of flat silverware which it sold that was advertised as Rogers’ goods, or bore trade-marks with the name “Rogers” thereon, it is certain that business of that kind was substantial. Complainant allowed all this to go on, but was on friendly relations with William A. Rogers, Limited, and at times purchased goods from the latter. The suits which it had brought again 4 William A. Rogers in 3895 and 3898 in order to stop the use of its name did not succeed and were discontinued in 1937. In view of complainant’s disregard of the name “Rogers” simplieiter and its failure to make any steady attempt to prevent its use by others, we must hold that it had no exclusive right to the use of that name.

But it may be argued that, even if the defendant has the right to use the name “Rogers” simplieiter, it has traded so unfairly ihat it should be denied ihat use and confined to its specific marks. One misrepresentation it has made is in its guaranty by Simeon L. & George Ii. Rogers Company, Inc. The old Simeon Company, the business of which defendant purchased, was dissolved, and the guaranty was by a company with only nominal assets, and defendant’s name does not appear on it. On the face of each guaranty is a picture of the original Simeon Rogers and his sons George and Simeon. This was a direct attempt to trade on the reputation and skill of one of the original brothers from whom complainant’s, and not defendant’s, good will may be regarded as in part derived.

The green advertising pamphlet of defendant (Exhibit 47) which its salesmen passed on to dealers was also intentionally misleading. It dealt with silver sold under the mark “1881 (R) Rogers (R).” It says that “its name has been universally accepted for half a century as representing unusual value in silverware in a vast moderate priced market,” and adds that these advertisements “are new links in a great chain of advertising continuing thru generation» " * creating a great name in silverware.” As a matter of fact, the mark “(R) Rogers (R) 1881” was not used before 190.1, and “3881 (R) Rogers (R)” until 1910. Neither had in any sense been used “thru generations.” The circular was obviously intended to represent that the reputation, of defendant’s Rogers plate was derived from the original brothers and that its excellence in silver plating came from the teachings in faithful workmanship of those men and the concerns with which they were associated. Nothing could be better calculated to misrepresent the truth. As a matter of fact, 1881 was a date having no significance except that of an unfounded antiquity. The mark was a deceptive imitation with the misleading variant “1881” of “(Anchor) Rogers (Anchor).” Indeed, “(R) Rogers (R) 3881” was held a deceptive imitation of the latter mark in Wm. A. Rogers, Limited, v. International Silver Co., 34 App. D. C. 413, and the only basis for tolerating a mark in which 1881 was placed at the beginning, rather than the end, is laches or estoppel. But there can be no justification for allowing it to be used unqualified after defendant began to represent that it was derived from the original Rog