seem from this decision, then, that the partner who originally owns the mark may by agreement permit the use of the trademark by the firm during its existence, reserving the title to the trademark to himself in the event of dissolution.

In a recent case it has been held that "When a trademark or tradename is owned by one who enters into a partnership with another for the manufacture of the article designated, the title of the trademark does not pass to the partnership except by express agreement." A like ruling has been made as to the trademark of one of the incorporators of a corporation.95 In each case the title of the mark is a question of fact, and title to personalty usually follows possession. Use by a partnership is prima facie evidence of ownership by the partnership.

The federal supreme court has held that when a partner retires from a firm, assenting to or acquiescing in the retention by the other partners of the old place of business and the future conduct of the business by them under the old name, the goodwill (including the title to the firm's trademarks) remains with the latter as a matter of course.9 96

It is important to note, in considering the assignability of trademarks, the doctrine first announced by Judge Shipman, that "The right to use a trademark can not be so enjoyed by an assignee that he shall have the right to affix the mark to goods differing in character or species from the article to which it was originally attached." 97 And where the trademark involved the use of the assignor's name, it was said: "Where an individual parts with a right to the use of his own name in any given connection, the courts should not extend the contract by which he does so beyond its necessary scope. It certainly will not be held that a man has tied himself up so as to prevent the use of his own name any further than the clear terms of the agreement show his intention to do so." 98

94-Kirkpatrick, J., in Greacen v. Bell, 115 Fed. Rep. 553, 554.

95-Cutter v. Gudebrod Bros. Co. (2), 61 N. Y. Supp. 225. 96-Menendez v. Holt, 128 U. S. 514, 522; 32 L. Ed. 526.

13

97-Filkins V. Blackman, Blatchf. 440, 444; Fed. Case

No. 4,786. This rule is again laid down in Chattanooga Medicine Co. v. Thedford (1), 49 Fed. Rep. 949, 952; Chattanooga Medicine Co. v. Thedford (2), 58 Fed. Rep. 347.

98-Newman, J., in Chattanooga Medicine Co. v. Thedford (2), 58 Fed. Rep. 347, 349; reversed upon

One who has assigned either his trademark99 or tradename1 will be enjoined from again using the mark or name himself; if he makes such an assignment to a corporation with a reversion to him if the corporation ceases to exist, he can not make a valid assignment of the mark to another during the life of the corporation.2

The assignee of a trademark does not, merely by virtue of the assignment, obtain a right to enjoin infringers of the mark. He must show that he has actually applied it, commercially, to goods of the class for which it is claimed as a trademark.3

While, as we have seen, a trademark is assignable only in connection with the good will of the business in which it is used, it does not follow that both must be conveyed by the same instrument or at the same time; and under the English Patents, Trademarks and Copyright Act of 1883 it has been held that the registration of an assignment of a trademark need not be contemporaneous with the assignment of the good will. It is possible that the originator of a manufacturing business and the person who purchases that business may each thereafter have a right to the limited use of the

the ground of unfair competition by defendants, in Chattanooga Medicine Co. v. Thedford, 14 C. C. A. 101; 66 Fed. Rep. 544.

99-Bury v. Bedford, 4 DeG. J. & S. 352; Burkhardt v. Burkhardt Co., 4 Ohio N. P. 358.

"Nothing seems to be better established in the law of trademarks than that where the owner of a trademark grants the right to another, either by sale or license, to use the mark on the goods with which its use is connected and abandons its use himself, he can not afterward either deprive his assignee of the right to its use or set up an adverse use. By use in connection with the business, the assignee acquires the title abandoned by the assignor, and the title is of that exclusive character which is entitled to

protection even against such assignor." Van Orsdel, J., in Macwilliam v. President Suspender Co. (C. A. D. C.), 242 Off. Gaz. 255; following Buffalo Rubber Mfg. Co. v. Batavia Rubber Co., 153 N. Y. Supp. 779; Huff v. Wallace, 97 Atl. Rep. 45.

1-Churton v. Douglas, Johnson (Eng.) 174.

2-Petrolia Mfg. Co. v. Bell & Bogart Soap Co., 97 Fed. Rep. 781, 784.

3-Walton v. Crowley, Fed. Case No. 17,133; 3 Blatchf. 440, 448; Filkins v. Blackman, 13 Blatchf. 440, 445; Fed. Case No. 4,786.

4-In re Wellcome, L. R. 32 Ch. D. 213; 3 R. P. C. 76; 55 L. J. Ch. 542; 54 L. T. 493; 34 W. R. 453; Cartmell, 342.

tradename and trademark used in connection with that business. Where such a state of facts arises, either the vendor or purchaser can assign his right to the use of the tradename and trademark, and either will be enjoined upon the application of the other from using the words "only genuine" in connection. with the name or mark.

In a case where a trademark was used by a manufacturer in England and also by a firm in the United States in which he was a partner, the use of the trademark having begun in both places about the same time, and it having become a distinctive mark, identifying the article manufactured in the United States, the English manufacturer retired from the American house. Upon his subsequently attempting to use it in a separate business of the same kind in this country, it was held that his successors in the old firm had, upon his retirement, succeeded to the exclusive right to use the trademark, as part of the business, and he was enjoined from using the mark in his new establishment in the United States." This case is but a practical application of the doctrines we have just considered, to an unusual state of facts.

Where the infringing corporation is in bankruptcy, the infringing word being part of the corporate name, the injunction will be granted to prevent the sale of the infringing word as part of the assets."

7a

Whenever the alien owner of a trademark has abandoned its use in the United States by neglecting to assert his rights as against infringers in this country, the public has a right to use that mark, of which it will not be divested by the operation of a law subsequently enacted by the country of which the former owner is a citizen. A trademark applied to mineral

8

5-Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546; Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 87 Fed. Rep. 201; affirmed, 95 Fed. Rep. 457; 37 C. C. A. 146. 6-Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 87 Fed. Rep. 203. 7-Batchelor v. Thompson, 86 Fed. Rep. 630.

7a-Rice & Hutchins v. Vera Shoe Co., 290 Fed. Rep. 124, 127; C. C. A. 2.

8-Saxlehner v. Eisner & Mendelson Co. (2), 91 Fed. Rep. 536; Saxlehner v. Eisner & Mendelson Co. (3), 179 U. S. 19, 36; 45 L. Ed. 60.

paint produced from a deposit on a particular piece of land will pass to a purchaser of the land as an incident to the realty," as will a trademark applied to the water of a particular spring 10 or the right to use words designating a particular building rather than the business conducted therein,11 or the right to use a mark which has come to designate the product of a mill or factory rather than of the proprietor.12

In a case where the plaintiff had assigned the right to use his trademark to the defendant for a term of years, for a share of the profits of defendant's business, and during the term reengaged in the use of the mark, in an action by the plaintiff upon the contract it was held that the plaintiff could recover the profits due him under the contract, and the defendant was allowed damages for the breach of the contract. The validity of the assignment appears not to have been questioned.13

There is an exception to the general rule that a trademark can not be assigned save in connection with a business; where the mark is associated with the product of a secret process, the mark necessarily goes with an assignment of the process.14 Thus the Court of Appeals of New York, speaking through O'Brien, J., has said, "There are doubtless some trademarks that consist of words that identify an article produced by some secret process and without the use of which the article could not be described. In other words the name used may be inherent in the article itself and is not used in this case to distinguish one cigar from another. The celebrated cordial, which is in use the world over, known as 'Chartreuse' is a sample of a trademark, the bare assignment of which might confer upon the assignee the right to manufacture and sell that article.' '15

9-Prince Mfg. Co. v. Prince's Metallic Paint Co., 15 N. Y. Supp. 249; Cox, Manual, 721.

10-Hill v. Lockwood, 32 Fed. Rep. 389.

11-Armstrong v. Kleinhaus, 82 Ky. 303.

12-Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217.

13-Coe v. Bradley, 9 Off. Gaz. 541; Fed. Case No. 2,941.

14-Tuttle v. Blow, 176 Mo. 158, 173; Falk v. American West Indies Trading Co., 180 N. Y. 445; Baldwin v. Von Micheroux, 25 N. Y. Supp. 857, 859.

15-Falk v. American West Indies Trading Co., 180 N. Y. 445.

The doctrine of a later case is that where trademarked goods are made under a formula and their manufacture abandoned, one who lawfully acquires knowledge of the formula may apply the trademark to its product, as against one who, in the interim, has applied the trademark to a spurious article not made by the formula.16 The decision so holding was subsequently reversed upon the facts; but the legal rule is believed to be sound.

Judicial Sales.-The sale by an assignee for the benefit of creditors of labels bearing the trading-name "R. & H. Adams' has been held not to authorize the use of such labels by the vendee.1a But the general rule is that one who purchases all the property of a firm including the good will, from an assignee or receiver, acquires the right to use the firm name with notice that the vendee is the successor.17b

In a case where, subsequent to the sale of the chattels or a bankrupt, the trustee in bankruptcy attempted to sell the good will and trademarks of the bankrupt's former business, Judge Hough said:

"In due course of time the trustee sold the goods and chattels of the bankrupt, but made no attempt to sell the good will of the bankrupt's business, nor the trademark; nor did he sell the business as a going concern. The effect of these proceedings by the trustee was to kill the good will and destroy the trademark; for it is admitted that this particular kind of trademark can not pass, except in conjunction with the good will of a business. What has become of the bankrupt's business? It stopped by bankruptcy, was killed by the trustee's sale, and the present intended action on the part of the trustee is an attempt to galvanize it into life again, something which can not be done.

16-W. A. Gaines & Co. v. Kahn, 155 Fed. Rep. 639.

17-Kahn v. W. A. Gaines & Co., 161 Fed. Rep. 495; 88 C. C. A. 437; cf. W. A. Gaines & Co. v. Rock Spring Dist. Co., 141 C. C. A. 287; 226 Fed. Rep. 531.

17a-Matter of Adams, 53 N. Y. Supp. 666.

17b-Chesterman v. Seeley, 5 Pa. Dist. 757.

17c-Re Jaysee Corset Co., 201 Fed. Rep. 779.