(273 F.)

as well as to sell the preparations, negatives an intention to abandon, so that the rights to the trade-mark were not lost by temporary nonuser. 8. Trade-marks and trade-names 39-Want of consideration to owner of trade-mark held to invalidate license contract, as abrogation of prior agreement.

In a contract between a corporation, which was in fact the owner of a trade-mark, subject to the right of a partnership to use it on certain preparations, and the partnership, whereby the partnership, for a consideration moving to it and future royalty payments, licensed the corporation to use the trade-mark on preparations other than those on which the partnership was licensed to use it, there was no consideration to the corporation which would make the contract binding on the corporation as an abrogation or novation of the previous contract by which the corporation had acquired the trade-mark.

9. Corporations 404 (2)-President cannot make contract divesting corporation of all assets.

in the absence of corporate authorization or ratification, a contract which divests the corporation of all its assets is beyond the power of the president to make.

10. Corporations 426 (1)-Sale of assets by president held not ratified. A contract by the president of a corporation, transferring all its assets, was not ratified by the corporation, where the next year it claimed to be the owner of the assets, and soon thereafter repudiated the alleged contract, which repudiation was acquiesced in by the other party. 11. Corporations 404 (2)-Transferee's ownership of all stock does not authorize president to transfer all corporate assets.

The fact that a transferee of all the assets of a corporation owned all the capital stock at the time of the transfer is not equivalent to antecedent corporate authority for the transfer by the president.

12. Contracts 82-Expressed consideration impliedly excludes another consideration.

The expression of one consideration in a written contract impliedly excludes any other consideration therefor.

13. Corporations 458-Transfer of stock to corporate president for his services is not consideration for sale of assets by corporation.

The fact that the transferee of all of the assets of a corporation, who also owned all the stock of the corporation, afterwards transferred the stock to the corporation's president in consideration for services rendered by him to the transferee, is not consideration to the corporation for the transfer of its assets.

14. Evidence ~231 (3) —Rights of transferee from corporation not affected by statements of officer after the transfer.

The transferee of a trade-mark previously owned by a corporation is not affected as to the rights so acquired by statements of an officer of the company made after the transfer.

15. Estoppel ~98 (2)-Transferee held not estopped by inconsistent statements by transferor in other proceedings involving different issues.

The transferee of trade-mark rights from an individual is not estopped as to such rights by the position taken by the individual in bankruptcy proceedings of a corporation, which also transferred its trade-mark to the transferee, and in a suit by the trustee in bankruptcy in which the individual was attempting to protect his rights as a minority stockholder, where the rights which he transferred were those which he held as an individual, and not as a stockholder.

16. Estoppel 54-Party claiming must be ignorant of real facts.

Misrepresentations on which estoppel in pais can be based must consist of facts, not opinions, and the party claiming the estoppel must have been ignorant of the real facts, so that complainant cannot rely on For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

estoppel without showing that it was ignorant of the facts concerning which the representations were made.

17. Trade-marks and trade-names 45-Registration does not enlarge rights of owner.

The registration of an existing common-law trade-mark does not confer any greater rights in the use of the mark on the registrant, nor diminish the rights of others entitled to the use thereof.

18. Trade-marks and trade-names 95 (4)-Threat to infringe, not shown to have been sanctioned by defendant, does not authorize injunction.

A bill to enjoin infringement of a trade-mark must be dismissed as to one defendant, where there had been no infringement, and the only threat to infringe was based on a circular issued by a third person, which was not shown to have been sanctioned by that defendant.

19. Trade-marks and trade-names 93 (3)-Transferee held not to infringe rights of prior transferee for specified articles.

Where complainant had acquired exclusive right to use a mark on certain specified toilet preparations, evidence held not to show that defendant had infringed complainant's rights, though it used the trademark on other toilet preparations, and thereby some confusion had arisen in the minds of the public as to the origin of the different articles. 20. Trade-marks and trade-names 64-Individual can use own name, which has acquired secondary meaning.

An individual has, subject to certain conditions, the right to use his name in his business, although his surname may have acquired a secondary meaning, and he has also the right to transfer that business to a corporation bearing his name.

21. Trade-marks and trade-names 61-Transfer of right in connection with stated articles includes only those articles and others closely resembling them.

The transfer of exclusive right to use an existing trade-mark on specified toilet preparations gives the transferee the right to prevent the use of such mark by others only for the same preparations, or for those so closely resembling them as to be calculated to deceive and mislead the public to believe that they are identical with those named in the transfer. In Equity. Suit by the Andrew Jergens Company against Woodbury, Incorporated, and others. Decree rendered, dismissing the bill. See, also, 271 Fed. 43.

Thomas F. Bayard, of Wilmington, Del., Keyes Winter, of New York City, and Walter A. De Camp and Dudley V. Sutphin, both of Cincinnati, Ohio, for plaintiff.

John Robert Taylor and Gustav Drews, both of New York City, for defendants.

MORRIS, District Judge. This is a suit to enjoin alleged trademark infringement and unfair competition. The complainant, the Andrew Jergens Company, an Ohio corporation, asserts that it has the right to the exclusive use of the name "Woodbury," or "Woodbury's," and of a mark consisting of a representation of a head minus the bust and neck, commonly described as a "neckless head," upon or in connection with toilet articles and dermatological preparations, and that the defendants, Wm. A. Woodbury Distributors, Inc., Woodbury, Inc., and Woodbury System, Inc., are, in violation of complainant's rights, using or threatening to use the name and mark upon similar articles

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

(273 F.)

and preparations. One defendant, the Distributors, denies that the plaintiff's rights in either the name or mark are exclusive, and, while admitting that it, the Distributors, uses the mark and the name upon certain toilet articles and preparations, and the name upon certain others, it denies that in so doing it has entered the field of complainant's rights. The remaining defendants claim that the complainant has failed to show that either of them has used or threatened to use the name or mark as charged. The case was tried in open court upon bill, answer, oral testimony, and documentary evidence. The relief sought is a permanent injunction and an accounting.

* *

The basic issues are: (1) What is the scope and extent of complainant's rights in the mark and name? and (2) Have its rights therein been infringed by the defendants or any of them? The complainant does not contend that it was the first to adopt and use the name or mark, but says that its rights "are based upon and were acquired by it through two contracts, one dated June 13, 1901, * and the other dated March 6, 1909." The 1901 contract was made by and between John H. Woodbury, John H. Woodbury Dermatological Institute, a New York corporation, P. R. McCargo, and Wm. A. Woodbury, of the one part, and Andrew Jergens & Co., a copartnership, of the other part. (As complainant's succession in title from the partnership through a New York corporation of similar name is not in issue, they will be considered herein as a single entity and referred to as the complainant, or the Jergens Company.) Prior to 1901 John H. Woodbury and the John H. Woodbury Dermatological Institute were successively the owners of and engaged in the business of making and selling certain proprietary medicated dermatological preparations and toilet articles of the general class of detergents, including, among other things, soap, creams, powders, shampoos, tonics, and lotions, all of which were adapted for use in the care of the human skin, hair, or teeth. The mark was first adopted by John H. Woodbury and used upon the package or receptacle for each commodity. As stated by the complainant:

"He appropriated that symbol as a mark of the entire class of toilet articles and preparations."

The essential feature of the mark, the neckless head, was usually accompanied, above, by the words "John H. Woodbury's" which were immediately followed by the name of the commodity upon which the mark was being used. Beneath, and at the sides of the head, printed matter in the nature of directions for using the article ordinarily appeared. In the year 1889 John H. Woodbury caused that mark, accompanied by his name and other printed matter, as above indicated, to be registered (serial No. 16,958) for facial soap. The next year he caused the John H. Woodbury Dermatological Institute to be incorporated in New York, and in consideration of its entire capital stock transferred to it all his rights, trade-marks, and good will. The Institute. prospered. It manufactured and sold, not only the eight articles thereafter sold to the Jergens Company, but many others of the same general class. It also became engaged in the business of treating persons

for facial blemishes and deformities and for diseases of the skin. Wm. A. Woodbury and McCargo were employees and stockholders of the Institute, and had, possibly, acquired through John H. Woodbury, to whom certain rights were reassigned by the Institute, some interest in one or more of the commodities.

Such, in brief, were the conditions when, in 1901, the first contract, through which the complainant claims, was made. By that contract John H. and Wm. A. Woodbury, McCargo, and the Institute transferred and assigned unto the complainant "all their right, title, and interest in and to the commodities known as Facial Soap, Facial Cream, Dental Cream, Tooth Powder, Odorine Powder, Facial Powder, Shaving Sticks, and Shaving Soap, and all the trade-marks, copyrights, and privileges of every name and nature whatsoever appurtenant to the ownership thereof," absolutely; "also the privilege of using only on the articles above mentioned the neckless head trade-mark."

It is not denied that the complainant is still entitled to all the legal rights in and to the name and mark that were acquired by it through that contract, but it is contended by the Distributors that the rights so obtained by the complainant have not been enlarged or increased. The complainant, on the other hand, asserts that the remaining and complementary rights in the name and mark were acquired by it through the contract of March 6, 1909, and that thereby its rights in the name and mark became exclusive.

The circumstances leading up to the last-mentioned contract appear at large in the pleadings in the suit of Stiles, Trustee, against the Jergens Company. Complainant's Exhibit No. 73. Briefly stated, they are that by the contract of 1901 John H. Woodbury also transferred to the complainant herein 50 shares (being one-half) of the capital stock of the Institute. The remaining 50 shares were then owned by John H. Woodbury, 30 shares; Wm. A. Woodbury, 19 shares; and McCargo, 1 share—which had been given to him by Wm. A. Woodbury. After the last-mentioned contract was made, the directorate of the Institute consisted of a representative of the Jergens Company, McCargo, and Wm. A. Woodbury. The business of the Institute continued as theretofore, save as to the eight specified articles sold to the Jergens Company. In 1904 the complainant bought for a very large sum of money the 1 share of stock owned by McCargo, and he was replaced as director by another representative of the Jergens interests. Thereby the complainant acquired control of the board, and consequently of the Institute and its business.

On October 7, 1908, the Institute was adjudged a bankrupt upon a petition filed on the 4th day of the preceding month. The contract of March 6, 1909, through which complainant claims, was made by the trustee in bankruptcy. Through that contract the Jergens Company claims to have acquired all the rights in the mark and name not theretofore owned by it. The trustee in bankruptcy of the Institute thereby undertook to assign to one Leyman, who immediately made a like assignment to the complainant, all the right, title, and interest that the Institute had in the neckless head trade-mark at the time the petition

(273 F.)

in bankruptcy was filed; in an application for a trade-mark, serial No. 37,232, filed by the Institute September 4, 1908 (being an application to register the word "Woodbury's" as a trade-mark for hair tonic, scalp cleaner, scalp cream, skin lotion, and massage cream), and

"The exclusive right to manufacture and sell the proprietary toilet articles known as 'Woodbury's Hair Tonic,' 'Woodbury's Massage Cream,' 'Woodbury's Scalp Cleaner,' 'Woodbury's Clear Skin Lotion,' 'Woodbury's Clear Skin Cream,' 'Woodbury's Scalp Cream,' and to use thereon the so-called 'neckless head' trade-mark, being a mark similar to that registered as United States trademark No. 16,958."

The Distributors contends that the trustee had no title to or interest in the rights he thereby undertook to transfer, and that consequently the complainant took nothing under that assignment. This contention of the Distributors is founded upon an agreement, dated November 10, 1905, between the Institute, of the one part, and the Woodbury Company, a New York corporation, of the other part, whereby the Institute assigned, as the Distributors contends, to the Woodbury Company, absolutely, all the rights that the trustee in bankruptcy of the Institute subsequently attempted to sell and transfer to the complainant through Leyman as hereinbefore pointed out. This agreement of 1905 recites the ownership by the Institute of the neckless head trademark and of lists of patients and other persons applying to it for treatment in medical, surgical, and hygienic branches, and lists of names of persons who had applied or were likely to apply to the Institute for such. treatment; that the Woodbury Company was desirous of acquiring the exclusive license to use the trade-mark, except in so far as conflicting licenses had been granted to other persons or corporations, "allowing the Institute, however, to reserve to itself the right to use the same so long as the Institute shall continue in active business, but not otherwise"; that the Woodbury Company was desirous of acquiring the lists. of patients and mailing lists, and any and all additional or supplementary lists of patients and mailing lists' that might be acquired by the Institute, "the same to be the exclusive property of the company if the Institute ever ceases to engage in active business"; and that the Woodbury Company was willing in consideration thereof to issue to the Institute its entire capital stock. The agreement then provides:

That the Institute, for and in consideration of the issuance and delivery to it of 100 full-paid and nonassessable shares of the capital stock of the company at par, being the entire capital stock thereof, shall and hereby does give and grant to the company the exclusive license to use the aforesaid neckless head trade-mark, which was registered by the Institute on the 3d day of June, 1889, except in so far as conflicting rights have heretofore been given or granted to other persons or corporations, reserving to itself, however, the right to use the same so long as it shall continue in active business, but not otherwise; and the Institute for the consideration aforesaid hereby agrees to forthwith deliver to the company true and accurate copies of any and all lists of patients and mailing lists described above which are now in possession of the Institute, and hereby agrees to supply the company every 30 days with any and all additional and supplemental lists of patients and mailing lists that may be acquired by the Institute in its business; and the Institute, for the consideration aforesaid, further agrees with the company that, if at any time the Institute shall cease to engage in active