SUPREME COURT.

#### John J. Decker and another agt. Myron A. Decker and another.

*New York, Chambers,*

*November,*1876.

*Trade mark—when injunction to restrain the use of a person's own name as a trade mark will not be allowed,.*

A defendant will not be restrained by injunction from the use of his own name, which he has caused to he registered and recorded as a trade mark in the patent office, on motion of a plaintiff by the same name and engaged in the same business, unless it plainly appears that it was obtained for the purpose of deception, or with a view to mislead the public or injure the plaintiff.

*It seems*doubtful whether in a collateral proceeding the court is empowered to restrain a party from the use of a trade mark, awarded to him in the established course of procedure, by the commissioner of patents. Where the answer and affidavits of defendants thoroughly and completely deny the whole equity of plaintiff’s case, as set forth in their complaint and affidavits, and thoroughly rebut all charges of evil intent and improper design in obtaining the trade mark, an injunction will not be granted.

*It seems*that it is improper to grant a preliminary injunction, except in cases where the injunction is absolutely necessary for the protection of the plaintiff’s rights and the furtherance of justice.

*J. D. Townsend,*for plaintiffs.

*Wm. J. A. Fuller,*for defendants.

Lawrence, *J.*

— In the case of *Meneely*agt. *Meneely*(62 *N. Y.,*427) the court of appeals held that a person cannot make a trade mark of his own name, and thus debar others having the same name from using it in their business ; and, also, that every man has the absolute right to use his own *219name in his own business, even though he may thereby interfere with and injure the business of another bearing the same name, provided he does not resort to any artifice, or do any act calculated to mislead the public as to the identity of the establishments, and to produce injury to the other beyond that which results from the similarity of the name.

In this case the plaintiffs have for a long time been engaged in business, in the city of New York, as manufacturers of piano fortes, under the firm name of Decker Brothers; and these pianos have, as their complaint alleges, and as their affidavits show, acquired much celebrity. The defendants have been in business since 1871, in the city of Hew York, as manufacturers of pianos, under the firm name of Decker & Barnes; but it also appears that they are both men of long experience in the business, and that the defendant, Myron A. Decker, was for a long time a manufacturer of pianos in this city, prior to 1871, under the firm name of Decker & Co.; and he claims that his pianos were known in the trade as the Decker pianos, long before the plaintiffs acquired a reputation as the manufacturers of pianos. Many of the best known manufacturers corroborate the defendant Decker’s allegations and state that they have known his piano as *“*the Decker piano, or piano forte,” for many years.

It appears that the defendants have caused to be registered and recorded, as a trade mark, in the patent office, “ *The Decker Piano.”*

The plaintiffs seek to enjoin and restrain the defendants from the use of this trade mark, and claim that it was obtained for the purpose of misleading and deceiving the public, and is an artifice or device calculated and intended to induce purchasers to believe that the defendants are solely entitled to use the name of Decker, and that the pianos manufactured by the defendants are the pianos of the plaintiffs.'

While it may be true, under the decision in the case of *Meneely*agt. *Meneely (supra),*that the defendants are not *220entitled to a trade mark such as they have obtained, I cannot, after a careful examination of the voluminous papers read upon this motion, hold that it was obtained for the purpose of deception, or with a view to mislead the public or injure the plaintiff, nor in the face of the affidavits read in support of the defendants that it is calculated to mislead the public.

It is very doubtful whether, in a collateral proceeding of this character, the court is empowered to restrain a party from the use of a trade mark, awarded to him in the established course of procedure, by the commissioner of patents.

The answer of the defendants and the affidavits read” on their behalf, so thoroughly and completely deny the whole equity of the plaintiff’s case as stated in their complaint and affidavits, and so thoroughly rebut all charges of evil intent and improper design in obtaining the trade mark, as to render it impossible for the court to say, upon a mere motion, that the defendants have injured the plaintiffs.

It is an elementary principle that, where the whole equity of the complaint is denied, an injunction will not be granted *(American Grocer Pub. Assn.*agt. *Grocer Pub. Co.,*51 *Howard, p.*402, *and cases cited ; Finnegan*agt. *Lee,*18 *How.,*186*and*187 ; see, also, the remarks of Harris, *J.,*in *Bruce*agt. *Del. and Hud. Canal Co.,*19 *Barb., p.*379, as to the impropriety of granting a preliminary injunction except in cases where the injunction is absolutely necessary for the protection of the plaintiff’s rights and the furtherance of justice).

For the reasons above stated, I am of the opinion that the motion for an injunction *pendente lite*should be denied, with costs.