Smoking Tobacco." After this he assigned the right to manufacture under his patent, and also the right to use the brand "Durham Smoking Tobacco," to Armistead, the applicant. If Wright had an exclusive right to this brand, then Armistead is entitled to have it registered; otherwise, not. Armistead attempts to fix the origin of this label back as far as 1860, when it was used in connection with the words "Best Spanish Flavored;" but in doing so he shows that it was first used by Morris & Wright, and by proving this he proves that Wright did not have the exclusive title to the label. If this is the origin of the mark claimed, then, to make Armistead's title to the same good, he should be able to show that he holds under Morris as well as under Wright. Wright could not convey to Armistead the exclusive right to use what belonged to Morris & Wright. But there is nothing of record to show that Armistead holds or claims to hold any thing, directly or indirectly, from Morris. An exclusive right to use is necessary, under the statute, to secure registration. Wright used the word "Durham" upon a small portion of the smoking-tobacco he manufactured during the year 1861 near Durham, North Carolina. This is the utmost that can be claimed, from the testimony, as to any use of the word by him alone before 1869. That such use of the name of a town where he did business should give him the right to carry such name into another State, and to use it to the exclusion of all other people in the United States, even the citizens of the town of Durham, is too preposterous to require more than a simple statement for its refutation.2 Blackwell claims under an assignment from one J. R. Green, and proves that Green first used the word "Durham" upon smoking-tobacco in 1865. That Wright used this word to mark packages of smoking-tobacco before Green did the tes 1 As partnership assets in hands of the survivor? 2 If it was, as he claims, an arbitrary symbol, and not the mere designation of a place, why could he not use it exclusively all the world over? timony does not leave a shadow of doubt; and if the case was a proper one for a judgment of priority I should unhesitatingly give it to Armistead as assignee of Wright. But it is not such a case. The words "Durham Smoking Tobacco" cannot constitute a legal trade-mark, and therefore cannot be registered. Neither would adding the name and place of business of the manufacturer help the matter. There is nothing registerable in either Blackwell's or Armistead's labels, and the Office blundered when it gave a certificate of registration to Blackwell. It should not repeat that blunder by giving a like certificate to Armistead. The Examiner, it seems, refused to register for Blackwell the words "Durham Smoking Tobacco;" but, when the words "Manufactured by W. T. Blackwell, Durham, N. C.," were added by amendment, registry was admitted. There is nothing in this label except the name "W. T. Blackwell" to which Blackwell had any exclusive right, and this name cannot be regarded as any part of the trade-mark. The parties have evidently been misled as to their rights by misreading some court decisions. Courts of equity have often granted injunctions against the fraudulent use of words which the same courts would not for a moment sustain as trade-marks. An example of this is found in what is known as "the Akron Cement Case," or Newman v. Alvord (Čox, 417). Newman lived at Akron, and manufactured from the quarries of that neighborhood watercement, which he put up in barrels and labelled "Akron Water Lime," and added his own name as manufacturer. Many of his neighbors were engaged in the same business, all using the words "Akron Water Lime," or "Akron Cement," but each attaching his own name. This lime, under the brand "Akron Cement," became popular, and one Alvord, living and doing business in Cleveland, commenced branding his waterlime "Akron Cement," adding his name and proper place of manufacture. Newman, one of the manufacturers at Akron, applied for and obtained an injunction enjoining Alvord against using the word "Akron" as any portion of his label. The court granted the injunction solely on the ground that Alvord used the word " Akron" for the purpose of making the public believe that it was the genuine Akron cement, and thereby obtaining by fraud trade that rightfully belonged to Newman and others in Akron. The learned judge was very careful to say, however, that Newman had no exclusive right to the use of the words "Akron Cement," but that the same might be used by any citizen of Akron, thereby holding that while "Akron Cement" was not a legal trade-mark, yet it was within the province of a court of equity to grant an injunction against its fraudulent use. was The same doctrine was held in the case of The Brooklyn White Lead Co. v. Masury. In this case Masury adopted as a label for his paint "Brooklyn White Lead and Zinc Company." As both did their manufacturing in Brooklyn, the court held that the respondent had a right to use the words "Brooklyn White Lead;" but as the word "Company' added for the purposes of fraud, a decree was entered enjoining Masury from using the word "Company." No one, however, would hold from this that the word "Company," as attached to a firm or corporation name, could be regarded as a trademark. The court enjoined against fraud, but with no intention of defining a trade-mark. Many other cases to the same effect might be referred to, but these are enough. The words "Durham Smoking Tobacco" may be used with impunity by any persons engaged in manufacturing smokingtobacco at Durham, and for that reason no one person has any exclusive right to their use. By the statute an exclusive right to use the proposed trade-mark must be established before registry can be allowed. By application of the doctrine held in the " Akron Cement" case any person living at Durham, and engaged in manufacturing smoking-tobacco, might enjoin any person not living there who should fraudulently use the word "Durham" on tobacco labels for the purpose of obtaining trade that otherwise would go to Durham. This may be true, and yet the words "Durham Smoking Tobacco" not be a legal trade-mark. These parties have already had adjudicated between them a question involving nearly all of the points here discussed. In the case of Blackwell v. Armistead, lately decided in the United States District Court for the Western District of Virginia, Justice Rives very fully and ably discusses this whole matter on substantially the same testimony submitted in this case. The trade-marks, as discussed by him, differed from the marks under consideration here in this: One of them had, in addition to the words "Durham Smoking Tobacco," the representation of a bull's head, and the other of the full-size view of a bull. So far as the questions are the same, I believe the holdings in this are substantially the same as held by the learned judge in that case.1 As neither party is entitled to registration, the interference must be dissolved, and registration refused to Armistead. If I had power to cancel the certificate granted to Blackwell, I should certainly do so. § 660. Let us now peruse the opinion of his Honor, Judge Rives, who based his opinion upon the identical testimony which was transcribed from the records of his court for the use of the Special Examiner in the Patent Office. The decision will stand upon its own merits, so that the annotations cannot add to nor detract from its wisdom. With the most profound deference for the learning of the Judge, it is with hesitation that any errors of judgment shall be pointed out, errors as to the law; for with facts we need not trouble our heads. The whole case is a study, from beginning to end, and simply as a study is it so fully set forth. 1 That is, as to the question of fact of "Durham" being a mere name of a place. U. S. Circuit Court for the Western District of Virginia, March Term, 1872, W. T. BLACKWELL, AND J. S. CARR, PARTNERS v. L. L. ARMISTEAD. In Chancery. Bill to enjoin Violation of Trade-mark. OPINION. RIVES, J.-The preliminary injunction in this case was founded on the statements of the bill. In pursuance of the notice required by statute, the defendant appeared and contested its emanation upon ex parte affidavits assailing the title of the plaintiffs. But in that incipient state of the proceedings it would not have been proper, if at all practicable, to pass upon the merits of this defence; and the only question then was, whether the case, as presented by the bill and affected by this adverse testimony, was still such as to require this stay till the merits of the controversy could be developed by further pleading and testimony. The propriety of this interposition by the court will scarcely be now questioned, as these further proceedings have shown the case to be one of perplexity and doubt. The pleadings have now been perfected. The defendant's answer was duly filed, issue taken upon it, and the cause set down for final hearing. A vast volume of testimony has also been taken, some of it contradictory, and a vast deal of it irrelevant and impertinent. It is to be regretted that the zeal of counsel or the anxiety of parties should have so augmented the bulk of this testimony as to make a needlessly expensive record of it, and to devolve upon all engaged in its examination a wearisome amount of unprofitable reading. Still it is a subject of congratulation that the cause is now fully developed in all its aspects and bearings, and has been argued with a dis |