This principle is illustrated in the case of Jergens Co. v Woodbury, given in the New York Law Journal (Nov. 1907). The Jergens Company was the sales agent of John H. Woodbury, the celebrated dermatologist, in the sale of "Woodbury's Facial Soap." In 1901 Woodbury assigned the business to the complainant. Under the complainant's management a large and profitable sale for the soap was established.
The famous Woodbury trade-mark.
In 1906, Woodbury started to manufacture soap again, calling his product "Woodbury's New Skin Soap." This product, so far as the package or wrappers were concerned, had no resemblance to the complainant's soap, the only point of similarity being in the name.
In a suit brought in the New York Supreme Court it was held by the court that there was ground for belief that the public would be misled by defendant's use of the name Woodbury, and he was accordingly enjoined.
This case went up to the Court of Appeals, and that court upheld the decision of the lower court, in so far as the defendant was restrained from using the name Woodbury in connection with the sale of soap in such a way that the public would be led to believe that his product was "Woodbury's Facial Soap" or a new brand thereof.
For the assignment of a trade-mark no particular form of assignment is required except it must be in writing.
The law provides that assignments may be recorded in the Patent Office. If any assignment is not recorded within three months after its date, it will be held void as against a subsequent purchaser for valuable consideration.