1. To entitle a name to equitable protection as a trademark, the
right to its use must be exclusive, and not one which others may
employ with as much truth as those who use it. And this is so
although the use by a second producer, in describing truthfully his
product, of a name or a combination of words already in use by
another, may have the effect of causing the public to mistake as to
the origin or ownership of the product. Purchasers, though
mistaken, are not in such a case deceived by false representations,
and equity will not enjoin against telling the truth.
2. Hence no one can apply the name of a district of country to a
well known article of commerce and obtain thereby such an exclusive
right to the application as to prevent others inhabiting the
district or dealing in similar articles coming from the district
from truthfully using the same designation.
3. Accordingly, where the coal of one person who early and long
mined coal in a valley of Pennsylvania known as the Lackawanna
Valley had been designated and become known as "Lackawanna coal,"
held that miners who came in afterwards and mined in
another part of the same
Page 80 U. S. 312
valley could not be enjoined against calling their coal
"Lackawanna coal," it being in fact and in its generic character
properly so designated, although more properly described when
specifically spoken of as "Scranton coal" or "Pittston coal," and
when specifically spoken of usually so called.
In the northeastern section of Pennsylvania there exists a place
or region to which from early times the name of Lorckaworna, or
Lackawanna, seems, on the few occasions when the place is
mentioned, to have been given. As early as 1793, the diary of
William Colbert, a pioneer preacher of the Methodists, makes record
of his meeting a person who lived at "Lackawanna," and of his
crossing a mountain and getting there himself. A deed dated in 1774
speaks of a river running through that valley or region as "the
Lackaworna," and another deed dated in 1796 conveyed "lands lying
and being in Upper Settlement, so-called, and abutting on each side
of the Lackawanna." The region, however, in those early times was
uncultivated and little known to people generally in any way, and
the name was unheard of and unnoted except by those who were
dwelling in the very district.
The discovery and use of coal in Pennsylvania, soon after the
year 1820, wrought an immense change in the whole northeastern part
of the state. It brought this valley and others, as, for example,
the Wyoming, Lehigh, and Schuylkill, into very prominent position
and interest, and the "Lackawanna Valley" soon became a well known
and sufficiently defined region -- one of large dimensions,
extending along what had become known as the Lackawanna River to
its junction with the Susquehanna. [
Footnote 1] In 1825, the Delaware & Hudson Canal
Company purchased coal lands in this
Page 80 U. S. 313
region, and in order to mine and bring the coal there to market
constructed at great expense a canal from Rondout, on the Hudson,
to Honesdale, in Pennsylvania, a distance of one hundred and eight
miles, and a railroad thence to their coal mines, which they had
since maintained for the purpose of bringing their coal to market.
This transport they began to make in 1828, and had ever since been
engaged in taking out coal and in carrying it to the Hudson River
and to the markets of the country, gradually increasing their
annual productions. In the first year they produced 720 tons, in
the second year 43,000 tons, and in 1866 1,300,000 tons.
The coal coming from the Lackawanna Valley, and its being
impossible for ordinary persons by mere inspection to distinguish
it from that mined elsewhere, it naturally got, or artificially had
given to it, at the commencement of the company's business, the
name "Lackawanna coal," and by this name it had been generally
afterwards known and called in the market.
Although this coal came from a section of country called both by
geologists and the public the Lackawanna region, still the company
were, without doubt, the first and for more than twenty years the
only producers of coal from that region, and during all this time,
their coal had become favorably known in market by the name already
mentioned.
In 1850, another company, the Pennsylvania Coal Company, began
to mine coal from
their mines situated in the same general
region of country, and for the first two years, the coal which they
mined was partially prepared and brought to market by the Delaware
& Hudson Canal Company, already named as the original operators
and sold under contract in common with their own; but, about 1852,
when the Pennsylvania company began itself to bring its coal to
market and to sell it, it got or had given to it the name of
"Pittston coal," by which it was frequently or generally known and
called, especially when specifically spoken of.
Afterwards, about 1856, a third company -- the Delaware,
Page 80 U. S. 314
Lackawanna & Western Railroad Company -- began to mine coal
from mines which they owned, situated in other parts of the same
section of country, and to distinguish it from that of other
producers, their coal got or had given to it the name of "Scranton
coal," by which it had since been frequently or generally known and
called, especially when meant to be particularly referred to.
Coals from other parts of the same region got or had given to
them distinctive names such as Lehigh coal, Hazelton coal, Spring
Mountain coal, Sugarloaf coal &c., and in like manner coals
from the Schuylkill region acquired or had given to them
distinctive names by which the same were known more particularly in
the market.
With all this, however, all the varieties coming, as in effect
they did, from the same great veins or strata, were not
infrequently of later times spoken of by the trade, when speaking
generally, as being Lackawanna coal, and under the general heading
of statistics relating to coal would be spoken of in like generic
terms.
The original Lackawanna was asserted by those interested in its
sale to be better prepared than either of the others. From this
circumstance or from some other, it was esteemed and commanded,
with a class of purchasers, a higher price than either the Scranton
or Pittston.
The canal company had a market for their Lackawanna coal in the
City and State of New York, and also in the cities and towns of the
eastern states and, amongst others, at Providence, R.I., where they
had for many years sold annually large quantities by the name of
"Lackawanna coal," by which it had been favorably known.
In this state of things, one Clark, a dealer in coals at
Providence, advertised in the newspapers published in that city and
otherwise that he kept on hand, for sale cheap, large quantities of
"Lackawanna coal," and in this way and
by that name had
sold many tons of the Pittston and Scranton coals annually. It was
admitted that he did not have any of the canal company's coal --
that is to say, the original Lackawanna -- for sale.
Page 80 U. S. 315
Hereupon the Delaware & Hudson Canal Company filed their
bill against Clark to enjoin his calling the coal which he sold
"Lackawanna coal." The bill averred that about the time the canal
company commenced their operations, they sought out, devised, and
adopted the name "Lackawanna coal" as a special, particular, and
distinctive name or trademark by which their coal might be
introduced to dealers as the product of their mines in distinction
from the coal of other producers, and that prior to their adoption
of the word "Lackawanna," it had never been adopted or used in
combination with the word "coal" as a name or trademark for any
kind of coal. Their bill also averred that ever since their
adoption of the name, their coal has been called and known in the
market as "Lackawanna coal" and by no other name.
The defendant, it was admitted, had none of the complainant's
"Lackawanna coal" for sale, but dealt in coals from another part of
the Valley -- sorts which when specifically distinguished, as they
constantly were, were distinguished by the name of "Scranton coal"
and "Pittston coal;" coals having the same general appearance as
the complainant's "Lackawanna coal," and which the bill alleged
could not be easily distinguished therefrom by inspection.
The answer denied that the name "Lackawanna coal" was or ever
had been the peculiar property and trademark of the complainants or
of benefit to them as establishing the identity of the coal. It
admitted that the defendant kept coal for sale, and that he did not
purchase or keep for sale any of the company's Lackawanna coal, and
that he dealt almost exclusively in coal mentioned in the bill as
Scranton and Pittston coal, and that the two varieties were of the
same general appearance as the coal of the complainants. It denied,
however, that those varieties of coal were known by the names just
mentioned, exclusively, or were of a less good quality than the
coal of the complainants, and averred the contrary, affirming that
they were equally Lackawanna
Page 80 U. S. 316
coal, and known by that name, as the evidence tended to show
that generically they were.
The court below dismissed the bill, and from that decree the
Delaware & Hudson Canal Company appealed, the leading question
presented by the appeal being whether the complainants had an
exclusive right to the use of the words "Lackawanna coal," as a
distinctive name or trademark for the coal mined by them and
transported over their railroad and canal to market, there being
also some other points not necessary to be here stated.
The case was fully and remarkable well argued on both sides, and
with a nice analysis of authorities.
Page 80 U. S. 320
MR. JUSTICE STRONG delivered the opinion of the Court.
The first and leading question presented by this case is whether
the complainants have an exclusive right to the use of the words
"Lackawanna coal," as a distinctive name
Page 80 U. S. 321
or trademark for the coal mined by them and transported over
their railroad and canal to market.
The averments of the bill [
Footnote 2] are supported by no inconsiderable evidence.
The complainants were undoubtedly if not the first, among the
first, producers of coal from the Lackawanna Valley, and the coal
sent to market by them has been generally known and designated as
Lackawanna coal. Whether the name "Lackawanna coal" was devised or
adopted by them as a trademark before it came into common use is
not so clearly established. On the contrary, the evidence shows
that long before the complainants commenced their operations and
long before they had any existence as a corporation, the region of
country in which their mines were situated was called "The
Lackawanna Valley;" that it is a region of large dimensions,
extending along the Lackawanna River to its junction with the
Susquehanna, embracing within its limits great bodies of coal
lands, upon a portion of which are the mines of the complainants
and upon other portions of which are the mines of the Pennsylvania
Coal Company, those of The Delaware, Lackawanna & Western
Railroad Company, and those of other smaller operators. The word
"Lackawanna," then, was not devised by the complainants. They found
it a settled and known appellative of the district in which their
coal deposits and those of others were situated. At the time when
they began to use it, it was a recognized description of the region
and of course of the earths and minerals in the region.
The bill alleges, however, not only that the complainants
devised, adopted, and appropriated the word as a name or trademark
for their coal, but that it had never before been used or applied
in combination with the word "coal" as a name or trademark for any
kind of coal, and it is the combination of the word Lackawanna with
the word coal that constitutes the trademark to the exclusive use
of which they assert a right.
Page 80 U. S. 322
It may be observed there is no averment that the other coal of
the Lackawanna Valley differs at all in character or quality from
that mined on the complainants' lands. On the contrary, the bill
alleges that it cannot easily be distinguished therefrom by
inspection. The bill is therefore an attempt to secure to the
complainants the exclusive use of the name "Lackawanna coal" as
applied not to any manufacture of theirs, but to that portion of
the coal of the Lackawanna Valley which they mine and send to
market, differing neither in nature or quality from all other coal
of the same region.
Undoubtedly words or devices may be adopted as trademarks which
are not original inventions of him who adopts them, and courts of
equity will protect him against any fraudulent appropriation or
imitation of them by others. Property in a trademark, or rather in
the use of a trademark or name, has very little analogy to that
which exists in copyrights or in patents for inventions. Words in
common use, with some exceptions, may be adopted if at the time of
their adoption they were not employed to designate the same or like
articles of production. The office of a trademark is to point out
distinctively the origin, or ownership of the article to which it
is affixed -- or, in other words, to give notice who was the
producer. This may in many cases be done by a name, mark, or a
device well known but not previously applied to the same
article.
But though it is not necessary that the word adopted as a
tradename should be a new creation never before known or used,
there are some limits to the right of selection. This will be
manifest when it is considered that in all cases where rights to
the exclusive use of a trademark are invaded, it is invariably held
that the essence of the wrong consists in the sale of the goods of
one manufacturer or vendor as those of another, and that it is only
when this false representation is directly or indirectly made that
the party who appeals to a court of equity can have relief. This is
the doctrine of all
Page 80 U. S. 323
the authorities. [
Footnote
3] Hence the trademark must either by itself or by association
point distinctively to the origin or ownership of the article to
which it is applied. The reason of this is that unless it does,
neither can he who first adopted it be injured by any appropriation
or imitation of it by others nor can the public be deceived. The
first appropriator of a name or device pointing to his ownership,
or which, by being associated with articles of trade, has acquired
an understood reference to the originator, or manufacturer of the
articles, is injured whenever another adopts the same name or
device for similar articles, because such adoption is in effect
representing falsely that the productions of the latter are those
of the former. Thus the custom and advantages to which the
enterprise and skill of the first appropriator had given him a just
right are abstracted for another's use, and this is done by
deceiving the public, by inducing the public to purchase the goods
and manufactures of one person supposing them to be those of
another. The trademark must therefore be distinctive in its
original signification, pointing to the origin of the article, or
it must have become such by association. And there are two rules
which are not to be overlooked. No one can claim protection for the
exclusive use of a trademark or tradename which would practically
give him a monopoly in the sale of any goods other than those
produced or made by himself. If he could, the public would be
injured rather than protected, for competition would be destroyed.
Nor can a generic name, or a name merely descriptive of an article
of trade, of its qualities, ingredients, or characteristics, be
employed as a trademark and the exclusive use of it be entitled to
legal protection. As we said in the well considered case of
Amoskeag Manufacturing Company v. Spear, [
Footnote 4]
"the owner of an original trademark has an undoubted right to be
protected in the
Page 80 U. S. 324
exclusive use of all the marks, forms, forms, or symbols, that
were appropriated as designating the true origin or ownership of
the article or fabric to which they are affixed; but he has no
right to the exclusive use of any words, letters, figures, or
symbols, which have no relation to the origin or ownership of the
goods, but are only meant to indicate their names or quality. He
has no right to appropriate a sign or a symbol, which, from the
nature of the fact it is used to signify, others may employ with
equal truth, and therefore have an equal right to employ for the
same purpose. [
Footnote 5]"
And it is obvious that the same reasons which forbid the
exclusive appropriation of generic names or of those merely
descriptive of the article manufactured and which can be employed
with truth by other manufacturers, apply with equal force to the
appropriation of geographical names, designating districts of
country. Their nature is such that they cannot point to the origin
(personal origin) or ownership of the articles of trade to which
they may be applied. They point only at the place of production,
not to the producer, and could they be appropriated exclusively,
the appropriation would result in mischievous monopolies. Could
such phrases, as "Pennsylvania wheat," "Kentucky hemp," "Virginia
tobacco," or "Sea Island cotton," be protected as trademarks; could
anyone prevent all others from using them, or from selling articles
produced in the districts they describe under those appellations,
it would greatly embarrass trade, and secure exclusive rights to
individuals in that which is the common right of many. It can be
permitted only when the reasons that lie at the foundation of the
protection given to trademarks are entirely overlooked. It cannot
be said that there is any attempt to deceive the public when one
sells as Kentucky hemp, or as Lehigh coal, that which in truth is
such, or that there is any attempt to appropriate the
enterprise
Page 80 U. S. 325
or business reputation of another who may have previously sold
his goods with the same description. It is not selling one man's
goods as and for those of another. Nothing is more common than that
a manufacturer sends his products to market, designating them by
the name of the place where they were made. But we think no case
can be found in which other producers of similar products in the
same place, have been restrained from the use of the same name in
describing their goods. It is true that in the case of
Brooklyn
White Lead Company v. Masury, [
Footnote 6] where it appeared that the defendant (at first
selling his product under the name "Brooklyn white lead"), had
added to the name the word "Company" or "Co.," which made it an
imitation of the plaintiff's trademark, though he was not a
company, he was enjoined against the use of the added word. It was
a case of fraud. He had assumed a false name in imitation of a
prior true one, and with the obvious design of leading the public
to think his manufacture was that of the plaintiff. But the court
said, as both the plaintiff and defendant dealt in the same
article, and both manufactured it at Brooklyn, each had the same
right to describe it as Brooklyn white lead.
We have been referred by the plaintiffs to three decisions which
are supposed to justify the adoption of the name simply of a
district or town, as a trademark.
One of these is
Alvord v. Newman. There it appeared
that the complainants had been manufacturers of cement or water
lime at Akron, from beds in the neighborhood of that place, for
about thirteen years, and that they had always designated and sold
their products as "Akron cement," and "Akron water lime." The
defendants commenced a similar business twelve years later, and
manufactured cement from quarries situated near Syracuse, in
Onondaga County, and called their product "Onondaga
Akron
cement, or water lime." It was not in fact Akron cement (for Akron
and Syracuse were a long distance from each other), and the
Page 80 U. S. 326
purpose of calling it such was evidently to induce the public to
believe that it was the article made by the plaintiffs. The act of
the defendants was therefore an attempted fraud, and they were
restrained from applying the word Akron to their manufacture. But
the case does not rule that any other manufacturer at Akron might
not have called his product "Akron cement," or "Akron water lime."
On the contrary, it substantially concedes that the plaintiffs by
their prior appropriation of the name of the town in connection
with the words cement and lime acquired no exclusive right to its
use, as against anyone who could use it with truth.
McAndrews v. Bassett is another case cited by the
complainants. The plaintiffs in that case were manufacturers of
liquorice made from roots and juice imported from Anatolia and
Spain, and they sent their goods to market stamped "Anatolia." Soon
afterwards the defendants made to order from a sample of the
plaintiff's liquorice, other liquorice which they also stamped
"Anatolia." It was a clear case of an attempt to imitate the mark
previously existing, and to put upon the market the new manufacture
as that of the first manufacturers. It does not appear, from the
report of the case, that the juice or roots from which the
defendants' article was made came from Anatolia. If not, their mark
was false. Of course, the Lord Chancellor enjoined them. In answer
to the argument that the word Anatolia was in fact the geographical
designation of a whole country, a word common to all, and that
therefore there could be no property in it, he said,
"Property in the word for all purposes cannot exist; but
property in that word as applied by way of stamp upon a stick of
liquorice does exist the moment a stick of liquorice goes into the
market so stamped and obtains acceptance and reputation in the
market."
It was not merely the use of the word, but its application by
way of stamp upon each stick of liquorice that was protected.
Nothing in this case determines that a right to use the name of a
region of country as a trademark for an article may be acquired, to
the exclusion of others who produce or sell a similar article
coming from the same region.
Page 80 U. S. 327
Nor is such a doctrine to be found in
Seixo v.
Provezende, the remaining case cited by the complainants. The
case turned upon an imitation of the plaintiff's device, which was
the figure of a coronet combined with the word "Seixo," a word
which can hardly be said to have been the name of a district of
country. It means stony, and though applied to two estates, it was
also the name of the plaintiff. Yet nothing in the decision
warrants the inference that the word "Seixo" could alone become a
trademark for any article, much less that it could be protected as
a trademark for any article to the exclusion of its use in
describing other articles coming from the same estate.
It must then be considered as sound doctrine that no one can
apply the name of a district of country to well known article of
commerce, and obtain thereby such an exclusive right to the
application as to prevent others inhabiting the district or dealing
in similar articles coming from the district, from truthfully using
the same designation. It is only when the adoption or imitation of
what is claimed to be a trademark amounts to a false
representation, express or implied, designed or incidental, that
there is any title to relief against it. True it may be that the
use by a second producer, in describing truthfully his product, of
a name or a combination of words already in use by another, may
have the effect of causing the public to mistake as to the origin
or ownership of the product, but if it is just as true in its
application to his goods as it is to those of another who first
applied it, and who therefore claims an exclusive right to use it,
there is no legal or moral wrong done. Purchasers may be mistaken,
but they are not deceived by false representations, and equity will
not enjoin against telling the truth.
These principles, founded alike on reason and authority, are
decisive of the present case, and they relieve us from the
consideration of much that was pressed upon us in the argument. The
defendant has advertised for sale and he is selling coal not
obtained from the plaintiffs, not mined or brought to market by
them, but coal which he purchased
Page 80 U. S. 328
from the Pennsylvania Coal Company, or from the Delaware,
Lackawanna & Western Railroad Company. He has advertised and
sold it as Lackawanna coal. It is in fact coal from the Lackawanna
region. It is of the same quality and of the same general
appearance as that mined by the complainants. It is taken from the
same veins or strata. It is truly described by the term Lackawanna
coal, as is the coal of plaintiffs. The description does not point
to its origin or ownership, nor indicate in the slightest degree
the person, natural or artificial, who mined the coal or brought it
to market. All the coal taken from that region is known and has
been known for years by the trade, and rated in public statistics
as Lackawanna coal. True the Delaware, Lackawanna & Western
Railroad Company have sometimes called their coal Scranton coal,
and sometimes Scranton coal from the Lackawanna, and the
Pennsylvania Coal Company have called theirs, Pittston coal, thus
referring to the parts of the region in which they mine. But the
generic name, the comprehensive name for it all is Lackawanna coal.
In all the coal regions there are numerous collieries, owned and
operated by different proprietors, yet the product is truly and
rightfully described as Schuylkill, Lehigh, or Lackawanna coal,
according to the region from which it comes. We are therefore of
opinion that the defendant has invaded no right to which the
plaintiffs can maintain a claim. By advertising and selling coal
brought from the Lackawanna Valley as Lackawanna coal, he has made
no false representation, and we see no evidence that he has
attempted to sell his coal as and for the coal of the plaintiffs.
If the public are led into mistake, it is by the truth, not by any
false pretense. If the complainants' sales are diminished, it is
because they are not the only producers of Lackawanna coal, and not
because of any fraud of the defendant. The decree of the circuit
court dismissing the bill must therefore be
Affirmed.
[
Footnote 1]
The name, Lackawanna, it is said, is a corruption of the Indian
words Laha-whanna, the two words signifying the meeting of two
streams.
See Hollister's History of the Lackawanna Valley,
published by W. H. Tinson, New York, 1857, p. 10.
[
Footnote 2]
Quoted
supra, p.
80 U. S.
315.
[
Footnote 3]
Amoskeag Manufacturing Co. v. Spear, 2 Sandford's
Supreme Court 599;
Boardman v. Meriden Britannia Company,
35 Conn. 402;
Farina v. Silverlock, 39 English Law and
Equity 514.
[
Footnote 4]
2 Sandford's Supreme Court 599, quoted
supra, in the
note just preceding.
[
Footnote 5]
Vide Wolfe v. Goulard, 18 Howard's Practice Reports 64;
Fetridge v. Wells, 4 Abbott's Practice Reports 144;
Town v. Stetson, 5
id. N.S. 218;
Phalon v.
Wright, 5 Phillips 464;
Singleton v. Bolton, 3
Douglas 293;
Perry v. Truefitt, 6 Beavan 66;
Canham v.
Jones, 2 Vesey & Beames 218,
Millington v. Fox, 3
Milne & Craig 338.
[
Footnote 6]
25 Barb. 416.
