## Facts

- Borden’s Condensed Milk Co. (plaintiff) was a well-known New Jersey corporation selling milk and milk products nationwide under the trade name “Borden’s,” derived from founder Gail Borden (business begun in 1857; New Jersey corporation formed in 1899).
- Plaintiff used many brands featuring “Borden” or used in connection with “Borden’s Condensed Milk Company,” and had registered many of them.
- Plaintiff’s corporate powers were wide-ranging for milk and food products, but its charter contained no express authority to make or sell what was known commercially as ice cream.
- Plaintiff sold fresh milk, cream, and evaporated milk (including a “confectioners’ size” product) to confectioners for use in making commercial ice cream.
- Plaintiff also sold a “malted milk ice cream” product in a limited channel (marketed to hospitals), not to the general consuming public as ordinary commercial ice cream.
- Borden Ice Cream Co. (defendant) was incorporated in Illinois in 1911 to manufacture and deal in ice cream and similar products.
- During defendant’s formation, an individual named Charles F. (or Charles E.) Borden received one share, had no prior experience in the milk or ice-cream business, and was not a principal participant in organizing the company.
- Plaintiff notified defendant’s incorporators that “Borden” was closely identified with plaintiff’s dairy products and demanded that defendant stop using “Borden” in its corporate name and in connection with ice cream.
- Plaintiff sued in equity in federal district court seeking to enjoin defendant from using “Borden” in its corporate name and on ice-cream products and related materials.
- The district court entered an interlocutory (preliminary) injunction restricting defendant’s use of “Borden” unless accompanied by clear written notice that defendant’s goods were not plaintiff’s goods.
- Defendant appealed the preliminary injunction to the Seventh Circuit.

## Issues

1. Can a personal surname (“Borden”) be exclusively appropriated as a trademark or trade name to bar another company from using it in its corporate name, even if the surname has strong public association and is registered on various marks?
2. Is a preliminary injunction for unfair competition proper where the plaintiff has not made or sold commercial ice cream and the record does not show defendant is passing off its goods or business as the plaintiff’s, or otherwise causing injury to plaintiff’s existing business?

## Decision

- The Seventh Circuit reversed the interlocutory order granting the preliminary injunction.
- The court held that a personal name is not subject to exclusive appropriation as a trademark, even if registered.
- The court held that equity restrains unfair competition only on the ground that the complainant’s business is injured.
- Because plaintiff had never made or sold commercial ice cream (the business for which defendant was incorporated), the parties had not come into competition on that product line on the record presented.
- Applying its unfair-competition test, the court found no adequate showing that defendant was, in effect, passing off its goods as plaintiff’s goods or its business as plaintiff’s business, and therefore the preliminary restraint was not justified.

## Legal Principles

- A personal name or surname cannot be exclusively appropriated as a trademark to the extent of giving one trader an absolute right to bar all others from using the name, even where the name has value and registration exists.
- Injunctive relief for unfair competition in equity requires proof of actual injury (or a clear, non-speculative threat of injury) to the complainant’s existing business.
- The fundamental test of unfair competition is whether the defendant is, by its conduct, passing off its goods as the complainant’s goods or its business as the complainant’s business; a generalized possibility that the public may be misled is not enough by itself.
- Where the complainant has not entered the defendant’s product line and the record does not show present competition or passing off, a preliminary injunction restricting use of a surname in the defendant’s corporate name is generally unwarranted.

## Conclusion

The Seventh Circuit reversed the preliminary injunction because “Borden” as a surname was not exclusively monopolizable and, on the preliminary record, Borden’s Condensed Milk Co. had not shown that it competed in commercial ice cream or that Borden Ice Cream Co. was passing off its goods or business as plaintiff’s so as to cause legally cognizable injury warranting equitable relief.


Borden Ice Cream Co. v. Borden's Condensed Milk Co., 201 F. 510 (1912)