In the' absence of fraud or facts raising an estoppel, the fact that a person assists in the formation of a corporation, in the name of which his own name is used, does not pre clude the use of his own name as a part of the name of another corporation in which he subsequently becomes interested ; Bates Mfg. Co. v. Mach. Co., 141 Fed. 213.
There being no evidence of dishonesty, de fendant could not be enjoined from placing his own name' (Brinsmead) on his pianos, though it might bring him some advantage in consequence of that being the name of the piano of the plaintiff firm ; 29 T. L. R. 237.
One cannot recharge and sell empty Prest 0-Lite gas tanks except after complete and permanent obliteration of the trade-mark; mere covering by a label is not enough; Prest-O-Lite Co. v. Davis, 215 Fed. 349 ; and where the defendant sold liquor in bulk to plaintiff's detective, and at the same time delivered to him bottles bearing plaintiff's labels to be refilled with the liquor, it was held unfair trade; Hennessy v. Wine Grow ers' Ass'n, 212 Fed. 308.
Where the long and successful use of a trade-mark or name is clearly established, the fact that the owner has recognized and permitted the limited use thereof by another which does not appear to have misled any body, is not sufficient to defeat the owner's right to prevdnt others from using. It; Tetlow v. Tappan, 85 Jed. 774.
A party may affect his right to a trade mark by non-use, by a forbearance in suing protectively, and by adopting a new one. But the question of abandonment is always a question of intention ; Brown, Trade-Marks 536; equity, however, will not in general re fuse an injunction on account of delay in seeking relief where the proof of infringe ment is clear, even though the delay may be such as to preclude the party from any right to an account for past profits ; 31 L. T. 285 ; 45 L. Jour. 505. Where the excuse for the intentional use of another's trade-mark is that the owner permitted' such use, that ex cuse is disposed of by an action to stop it and no estoppel arises; Menendez v. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526.
A delay of two years in seeking to recover profits for the infringement of a trade-mark, partly taken up in negotiations for a settle ment, will not bar a suit, at least where the defendants had express notice that they would be held accountable ; Nelson v. Win chell & Co., 203 Mass. 75, 89 N. E. 180, 23 L. R. A. (N. S.) 1150. But one otherwise en titled to the exclusive use of a name, may lose his right by lathes and by acquiescence for nearly thirty years in Its use and allow ing the name to become generic ; French Re public v. Spring Co., 191 U. S. 427, 24 Sup.
Ct. 145, 48 L. Ed. 247. A delay for several years in bringing suit, during which the de fendant was openly selling its product and expending large sums in advertising it, bars a relief in equity and an accounting.
Acquiescence in the use by another of a certain trade name for a number of years in a wholesale shoe business does not preclude objection to its use in a retail shoe business ; Nolan Bros. Shoe Co. v. Nolan, 131 Cal. 271, 63 Pac. 480, 53 L. R. A. 384, 82 Am. St. Rep. 346, where, the contention that the name used was a family name was ineffectual, because used in such manner upon a sign as to de ceive the public.
Acts tending to, show an abandonment of a trade-mark are insufficient unless they show an actual intent to abandon ; Saxlehner v. E. & M. Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60.
An injunction against the use of marks which cannot be protected as trade-marks, will not be granted, where the defendant has persistently warned the public that it has no connection with the plaintiff ; Goodyear I. R. G. Co. v. Rubber Co., 128 U. S. 598, 9 Sup. Ct. 166, 32 L. Ed. 535.
A foreigner selling medicinal preparations in his own country, under a registered trade mark, has no common-law right to such trade-mark here, as against a domestic firm which had an established business under a similar trade-mark, adopted in good faith, before the other had sold any goods in this country ; Richter v. Remedy Co., 52 Fed. 455.
A trade-mark has no extra-territorial ef fect ; see 122 Fed. 105. Certain Carthusian monks In France had made and sold a liq ueur under the name of Chartreuse, which name was registered in the United States, where it had a market. The French govern ment having expelled them from France confiscated their business and, as it appears, their trade-mark, they re-established the business in Spain; it was held that the ac tion of the French government did not affect the title of the monks to the United States trademark; Baglin v. Cusenier Co., 156 Fed. 1016 ; on appeal it was held that the de fendants had the right to state on their labels the place where the liqueur was made, but must clearly distinguish their product from that made by the monks, and must not, by their labels, mislead purchasers ; Baglin v. Cusenier Co., 164 Fed. 25, 90 C. C. A. 499.