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November 18, 1982

Interpace Corporation, Plaintiff,
Lapp, Inc. Defendant

The opinion of the court was delivered by: BIUNNO

 This is a "name" case, a replay of the kind of problem courts have long struggled to solve effectively and fairly. See, for instance, Howe Scale Co. v. Wyckoff, etc., 198 U.S. 118, 49 L. Ed. 972, 25 S. Ct. 609 (1905) ("Remington"); Hilton v. Hilton, 89 N.J.Eq. 182, 104 A. 375 (E & A 1918); 89 N.J.Eq. 472, 106 A. 139 (Ch. 1919), aff'd., 90 N.J.Eq. 564, 107 A 263 (E & A 1919); Hat Corp., etc. v. D.L. Davis Co., 4 F. Supp. 613 (D.Conn.1933) ("Dobbs"); Chas. S. Merton & Co. v. Percy Merton, Inc., 103 N.J.Eq. 380, 143 A. 515 (Ch. 1928); Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 45 L. Ed. 365, 21 S. Ct. 270 (1901); American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 53 N.E. 141 (1899); Eureka Fire Hose Co. v. Eureka Rubber Mfg. Co., 69 N.J.Eq. 159, 60 A. 561 (Ch. 1905).

 This case is not one calling for an evaluation of similarities or differences, as between "Cottolene" and "Chefolene", N.K. Fairbanks Co. v. Ogden Packing & Provision Co., 220 F. 1002 (D. Utah 1914), "Havoline" and "Valvoline", Valvoline Oil Co. v. Havoline Oil Co., 211 Fed. 189 (D.N.Y.,1913); or between "Kidde-Koop" and "Kumfy-Crib", Trimble v. Woodstock Mfg. Co., 297 Fed. 524 (D.N.Y., 1923), aff'd., 297 Fed. 529 (CA. 2, 1924).

 Rather, the name's the same; in both cases it is "Lapp". And, while the name is not as common as "Johnson", see S.C. Johnson & Son, Inc. v. Johnson, 116 F.2d 427, at 430 (CA2, 1940), it is nonetheless a surname.

 At one time, the view was that the rule in these circumstances was fixed and immutable. As was said in Stix, Baer & Fuller Dry Goods Co. v. American Piano Co., 211 Fed. 271, at 274 (CA8, 1913):

"It is now settled beyond controversy that a family surname is incapable of exclusive appropriation in trade. The right of every man to use his own name in his business was declared in the law before the modern [sic] doctrine of unfair trade competition had arisen."

 Or, as was said earlier in the Howe Scale case, supra., involving the "Remington" family surname in connection with typewriters,

"We hold that, in the absence of contract, fraud or estoppel, any man may use his own name, in all legitimate ways, and as the whole or part of a corporate name". 198 U.S. at 140.

 The modern view is not that rigid. If the personal name has come to develop secondary meaning, to serve as an identification of origin (and thus part of the "good will" built up in time), even personal names, geographic names, descriptive names, and the like may be entitled to protection. While broad generalizations are not possible because each case will turn on its own facts, the concept was well expressed in American Waltham, supra:

"It is true that a man cannot appropriate a geographical name; but neither can he a color, or any part of the English language, or even a proper name to the exclusion of others whose names are like his. Yet a color in connection with a sufficiently complex combination of things may be recognized as saying so circumstantially that the defendant's goods are the plaintiff's as to pass the injunction line."

 These common law views are substantially codified in the Lanham Act. Thus, 15 USC § 1052, provides in paragraph (e) that registration on the principal register may be refused where the mark

(1) is merely descriptive of the goods; or
(2) is primarily geographically descriptive; or
(3) is primarily a surname.

 Paragraph (f), which appears to apply only to paragraph (e), however, allows registration of a mark which has become distinctive of the applicant's goods in commerce, which looks like a legislative draftsman's way of referring to secondary meaning.

 There are countless well-known examples. "Westinghouse" derives from George Westinghouse, who invented an air brake, railway signals, engines and turbines, hydroelectric and other alternating current generators for the long-distance transmission of electric energy.

 Thomas Alva Edison's name acquired secondary meaning in connection with a host of products he invented and manufactured. Yet, although he had devised the formula for a product, he was entitled to prevent the unlicensed use of his name, picture and testimonial when that product was made and marketed by another, Edison v. Edison Polyform Mfg. Co., 73 N.J.Eq. 136, 67 A. 392 (Ch. 1907).

 Henry Ford, Walter P. Chrysler, the Dodge brothers, Heren Daimler and Benz, and countless others put their names on the radiators and hubs of automobiles they made, and a court would be hard put today, after millions of sales over decades, to recognize another Ford, another Chrysler, another Dodge. The designation of origin for these names is too deep and too strong to allow another, even using his own name, to so identify his product. The origin of such names after a lifetime of use becomes historical, and what had been a surname becomes an anonymous identification of source and origin. When the quality and reliability are high, the secondary meaning becomes a valuable component of good will.

 In other instances, a surname becomes part of the language itself and is available for everyone to use freely. This was the case with Count Alessandro Volta, Professor Andre Ampere, Professor Georg Ohm and James Watt, for examples.

 The "Lapp" surname as used by plaintiff was used in business from 1916, when John S. Lapp formed the Lapp Insulator Co., Inc., with a plant in LeRoy, N.Y., where he was joined by his brother, Grover Lapp, the next year.

 The name was used in connection with the manufacture and sale of electrical insulators made of ceramic, and associated items such as hardware. For a time, the company also made electrical capacitors under the name Lapp, but that branch of the business has been sold off without including any right to use the Lapp name.

 Federal trademark registration was applied for June 30, 1952, and the trademark "Lapp" was registered November 24, 1953 as Registration No. 582,766. (Exh. P. 32). The statement on registration is that the trade-mark was first used on insulators in 1927, and first used in commerce interstate the same year. The mark is claimed to have become distinctive of the applicant's goods through substantially exclusive and continuous use for the 5 years before application filed. Such use gives rise to a statutory level of "prima facie evidence" of secondary meaning despite the fact that the trademark is otherwise primarily a surname, see 15 USC § 1052(f).

 The registration was for use with electric insulators and electric condensers (capacitors) in "Class 21, Electrical apparatus, machines, supplies."

 The Lapp Insulation Company, Inc. was later acquired by Interpace Corporation, and merged into the latter on June 27, 1969, Exh. P-6, since which time the operation has continued as the Lapp Division of Interpace Corporation.

 The federal registration is owned by Interpace and was renewed by it for 20 years from November 24, 1973, Exh. P-39.

 Sales by the Lapp Division in recent years have been of the order of $55. to $73. million a year.

 The earliest market when the business began was for the telegraph and telephone industry to minimize current leakage losses from outdoor wiring in wet weather. As knowledge and skills improved, ceramic insulation products were developed for the radio industry and the electrical power industry. The line of products today is quite broad, going up to ceramic insulators for experimental fusion reactors of the Tokamak type.

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