Menendez v. Holt

Appellees, partners in business under the firm name of Holt & Co., filed their bill of complaint July 17, 1882, against appellants, engaged in business under the firm name of Jos e Menendez & Bro., alleging that they were dealers in and bought and sold flour and grain; that Robert S. Holt had theretofore been for more than 25 years at the head of the firm of Holt & Co., which firm had from time to time been changed or dissolved by the retirement of various members, but in each such instance a new firm had been immediately formed, and succeeded to the firm name, good-will, brands, trade-marks, and other assets of the preceding firm, so that there had been no interruption of the name and business identity of Holt & Co. for over 25 years, during which time said firm had had a high reputation in the trade; that complainants were now legally seized of the good-will and all the trade-marks ever at any time used by the firm; that they were the owners of a certain trade-mark for flour, which consisted of the fanciful words 'La Favorita,' which was originated by the firm, and had been used by it for more than 20 years, to distinguish a certain flour of their selection and preparation; that said firm at all times exercised great care in the selection, packing, and preparation of the flour packed and sold by them under the said brand 'La Favorita,' and had carefully advertised the same, and by their care and efforts extensively introduced it to the trade, so that the said brand had come to be widely known and sought after by the trade, and the sale of flour so branded constituted an important part of the firm's business; that the brand was applied by stenciling it on the barrels; and that it had been duly registered by the firm in pursuance of law. Defendants were charged with having made use of the brand as a mark for flour of their own preparation or selection, in violation of complainants' rights.

The answer admitted the existence of the trade-mark, and that the defendants had used it, but denied that Holt & Co. were the owners; and averred that one Stephen O. Ryder was a member of Holt & Co. from 1861 to 1868, and had since used, and was entitled to use, said trade-mark as his own; that said Ryder put his own name on flour in connection with the name 'La Favorita;' and that defendants had sold such flour as the special selection of said Ryder, and not as selected by complainants.

Evidence was adduced in relation to the connection of Ryder with the firm of Holt & Co., his retirement therefrom, and the ownership of the brand thereupon, to establish the use of the trade-mark by Ryder and others without protest on complainants' part; also, subject to objection, to show a prior use of the same as a trade-mark for flour. It appeared that Holt & Co. deposited fac similes of the trade-mark October 17, 1881, in the patent-office, and that it was duly registered February 28, 1882. The circuit court refused an accounting, but held complainants entitled to the exclusive use of the words as a brand or trade-mark for flour, and that the defendants had infringed the rights of complainants in the use of the words on flour not prepared by complainants, and decreed a perpetual injunction. 23 Fed. Rep. 869. From that decree this appeal was prosecuted, and a reversal is asked on the grounds that the words 'La Favorita,' as used by the complainants, cannot be protected as a trademark; that there has been no infringement; that the words had been used as a brand before being used by Holt & Co.; that the title of Holt & Co. was not superior to that of S. O. Ryder; and that whatever rights complainants may once have had had been forfeited by laches.

A. V. Briesen, for appellants.

[Argument of Counsel from pages 516-518 intentionally omitted]

Rowland Cox, for appellees.

Mr. Chief Justice FULLER, after stating the facts as above, delivered the opinion of the court.