not cease to be the exclusive property of him who bore it. The court said that, for more than sixty years, the French manufacturers had made a certain kind of saws and files, on which they placed the mark" Stubs," with the initials “P. S." inverted; that said mark had become, in France, the indication of a product of superior quality; that it was not the indication of the origin of the manufacture, but was rather the designation of the nature and the quality of a product, of which it was the denomination, so that a purchaser could not be deceived into the belief that to him was presented an English product of the manufactory of Peter Stubs; that the files seized at Astier & Lechevallier's place bear, independent of this mark, "Stubs, P. S.," inverted, the initials "G. S.," indicating the real maker; that the files and saws seized at Reinaud's were wrapped in labels which made known the real place of manufacture; and that those divers circumstances manifested good faith and the absence of wilful injury. The same court, in 1864, in Spencer & Sons v. Peigney,1 held the same doctrine. In that case the English manufacturer's name had for fifty years been employed in France to indicate not the origin, but the nature of certain products. As foreigners, the parties in both cases had no privileges in the courts of France until the treaty of 1860, and that although the English courts were open to alien and subject alike. By the time they could be heard in the assertion of natural rights, their names had been turned to another than the original purpose, so far, at least, as the territory of France was concerned. The soundness of these decisions is questioned by distinguished jurists, among them M. Pataille. § 179. In the case of Bournhonet & Basille (successors of la maison Ternaux) v. Tisseron et al., in the Court of Cassation, in 1869,2 we have an instance in point. It was held that the successor of a merchant cannot prevent other merchants from using the name of his predecessor to designate 2 Ibid., tome xv. p. 90. 1 Annales de la Prop., tome x? p. 197. the products of their fabrication, when the name has long been used as the designation of a certain kind of products manufactured by the generality of the trade, and which has thus become public property as a qualifying term,—a mere adjective. It is especially so in the employment of the name of Ternaux, to designate a certain kind of broché shawls. § 180. The case of Singleton v. Bolton,1 before Lord Mansfield, in 1783, is an illustration of the doctrine that a man's name may become a mere qualifying word. The plaintiff's father sold a medicine called "Dr. Johnson's Yellow Ointment." The plaintiff, after his father's death, continued to sell the medicine, marked in the same way. The defendant also sold the medicine, with the same mark; and for that alleged injury an action was brought. The plaintiff was nonsuited. A rule having been obtained for a new trial, Lord Mansfield said that if the defendant had sold a medicine of his own under the plaintiff's name or mark, that would be a fraud, for which an action would lie. But here, both the plaintiff and defendant use the name of the original inventor, and no evidence was given of the defendant having sold it as if prepared by the plaintiff. The only other ground on which the action could be maintained was that of property in the plaintiff, which was not pretended, there being no patent. § 181. We have familiar instances of a person's name becoming a mere indication of a certain article or class of goods. Wellington, Brougham, Stanhope, Blücher, and Manton are personal names that have given us the wellington boots, the brougham or the stanhope carriage, the blücher boots, and the manton fowling-piece. But it is not understood upon what principle a person's mercantile name can be wrested from him by the mere lapse of time. In the Stubs and Spencer cases, the fact was apparent that in England those names were regarded as marks of origin and warranty. If good for that purpose in one country, they were equally efficacious for the 1 3 Doug. 293. same purpose in any other. The rights of their owners might § 182. Geographical Name. There are decisions which are supposed to justify the adoption of a mere geographical name as a trade-mark. One of these is Newman v. Alvord. The word "Akron" was the subject of the controversy. The plaintiffs were manufacturers of cement or water-lime, at the village of Akron, in the county of Erie, N. Y. The defendants were engaged in the same line of business at Syracuse, N. Y. The court, on appeal, held that this name, although geographical, designated the origin of the article made and dealt in by the plaintiffs, as well as the place of manufacture, and was appropriately used in these respects; for the material used by the plaintiffs was obtained and manufactured into water-lime cement at the village having that name. The doctrine that the name of a locality may be exclusively appropriated was distinctly enunciated; but it was also held that what may be claimed or used alike by all in the said place cannot be exclusively appropriated to advance the interests of one. Daniels, J., delivered the opinion of the general term. After reviewing various authorities bearing upon the question at issue, he said: "In the present case, the term selected to identify and distinguish the plaintiffs' manufacture from those of a similar character placed upon the market by others, had never been previously used for any such purpose. The use of it imposed a new attribute or office upon the word, which specially adapted it to indicate and distinguish the origin and place of the plaintiffs' manufacture; and it in no way entrenched upon the previous use or purpose to which the term had been in any way devoted by others. The term was made to bear and perform an entirely new duty or office, which could result in no embarrassment, prejudice, or injury to any other person whatsoever. And from the continued use made of it in that respect, it has become an important and valuable element in 1 48 Barb. 588. promoting and securing the prosperity of the plaintiffs' business, and as such the defendants should be restrained from making a similar use of it." While, for the purposes of that controversy, the court upheld the doctrine that the name of a place does indicate origin, we must not be misled by the broad language of the court. The plaintiffs came into court with clean hands, asking redress for an attempted fraud by the misuse of the word "Akron.” What did that case decide? It virtually decided that that word did not, as presented, possess all the ingredients of a lawful trade-mark, for it lacked exclusiveness of the right of user. Mr. Justice Strong, of the Supreme Court of the United States, in the case in that court, before cited, said that the decision in the Akron case 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 any one who could use it with truth. All the inhabitants of the village of Akron had the same right to brand or label their goods with the name as had the plaintiffs; therefore it was not purely a trade-mark in its broadest sense. As against a wrongdoer who had attempted by fraudulent means to divert custom from its legitimate channel, it was good. The important word is the name of the place where the cement is made. The article manufactured is taken from the earth. It is a bed or quarry of lime. There is no special art or skill in making it into cement. The cement taken from different beds differs greatly in value, as in quality. The reputation of the plaintiffs' cement arises from the reputation of the bed or quarry from which it is made, the Akron bed. They speak the truth in using the name. They tell the public by their bills - This is Akron lime. It is made from the Akron beds or quarries. The public have used it for years, and appreciate its qualities. The defendants, at a distance of 150 miles, change the name of their quarry, and incorporate the most significant word used by the plaintiffs for many years, and then prepare bills with this word prominent in them, and bring their article into markets in competition with the plaintiffs'. It was not necessary for the purposes of the particular case under discussion for the court to decide in so many words that the word "Akron " was a technical trade-mark. The concluding sentence of the decision is sufficient to determine what was really decided. Held, the plaintiffs' right to restrain the defendants from making use of the word "Akron " as their trade-mark is reasonably plain, and the judgment awarding the injunction should therefore be affirmed. § 183. The Brooklyn White Lead Co. v. Masury,1 before the general term of the Supreme Court of New York, in 1857, said that it is to protect a man's right of selling his own that the law of trade-marks has been introduced. It must include the right to sell to all, to the incautious as well as to the cautious. Any false name that is assumed in imitation of a prior true name is in violation of this right, and the use of it should be restrained by injunction. The plaintiffs had been engaged for more than twenty years in the manufacture of white lead, and had habitually marked their kegs with their name; adding the words, "premium lead, warranted pure." Both parties manufactured in the city of Brooklyn. As they both dealt in the same article, they had the same right to describe it as Brooklyn White Lead; and it was shown that many other companies had used the same designation. The defendant changed his mark, and assumed one to which he had no title, in imitation of the plaintiffs', with only a colorable difference, that of "Brooklyn White Lead and Zinc Company." He had no such company; and that part of his new title seems to have been adopted to imitate the plaintiffs', and to make his paint pass as theirs. This was a fraud. Held, the defendant should be enjoined from the use of the word " Company," or "Co." He may continue to use the title, "Brooklyn White Lead and Zinc," only omitting the word " Company." 1 25 Barb. 416. |