§ 64. The test of "origin or ownership."-One of the primary methods-if indeed it is not the fundamental test-in determining the validity of a trademark has been broadly announced by the Supreme Court of the United States in these words: "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." 57 And it has recently been said: "That such mark or symbol (i. e., any mark or symbol claimed as trademark) must be designed, as its primary object and purpose, to distinguish each of the articles to which it is affixed from like articles produced by others, seems to be the clear consensus of all the cases which are authoritative." 58 Substantially this form of expression has been employed by the American courts from their earliest trademark decisions. Our profoundly learned chancellor, Walworth, stated the rule as well as any court that has followed him, when he said: "The court proceeds upon the ground that the complainant has a valuable interest in the goodwill of his trade or business. And that having appropriated to himself a particular label, or sign or trademark, indicating to those who wish to give him their patronage that the article is manufactured or sold by him, or by his authority, or that he carries on business at a particular place, he is entitled to protection against a defendant who attempts to pirate upon the goodwill of the complainant's friends or customers, or the patrons of his trade or business, by sailing under his flag without his authority or consent." 59 In the light of this statement, the words of the supreme court assume a broader meaning. In 1849, the year following that in which the opinion last quoted from was rendered, it was said in an opinion of the Superior Court of New York City, 57-Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 20 L. 58-Lurton, J., in Deering Harrester Co. v. Whitman-Barnes Mfg. Co., 33 C. C. A. 558, 91 Fed. Rep. 376-378; citing Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 20 L. Ed. 281; Amoskeag Mfg. Co. v. Trainer, 101 U. S. 54; 25 L. Ed. 993; Lawrence Mfg. Co. v Tennessee Mfg. Co., 138 U. S. 537; 34 L. Ed. 997; Columbia Mill Co. v. Alcorn. 150 U. S. 460; 37 L. Ed. 1144. 59-Partridge v. Menck, 2 Sand. Ch. 622; 2 Barh. Ch. 101; 1 How. App. Cas. 558; Cox, 72; Seb. 91. 61 that "the owner of a trademark has no right to an exclusive use of any words, letters, figures or symbols which have no relation to the origin or ownership of the goods." 60 And the same court, by the same judge (Duer), repeated the statement in very nearly the same words in 1857, saying that a name. could be rightfully used and protected as a trademark only "where the name is used merely as indicating the true origin or ownership of the article offered for sale, never where it is used to designate the article itself and has become, by adoption and use, its proper appellation." And in 1868, the Supreme Court of California stated the rule to be that trademarks will be protected "only so far as such marks serve to designate the true origin or ownership of the goods to which they are attached." 62 So that when the doctrine as first stated by the federal supreme court was announced, it had become well settled in our jurisprudence that a trademark must indicate origin or ownership, and the only difficulty presented by the maxim to bench and bar is that of its application to each new state of facts as it arises. It must be noted, however, that "It is, of course, no fatal objection to the validity of a trademark that it does not include the name of the manufacturer or producer. The sign, symbol or mark may be purely fanciful, and convey no information as to the name of the producer. But the essential thing is that it shall be designed and used to indicate the origin of the article and that all articles having the same mark come from a common source. 763 It is self-evident that while a mark may be indicative of origin and ownership, it may, because generic or deceptive, fall short of being a valid trademark. But every valid trademark must be indicative of origin or ownership in the sense in which those words are used in the decisions. 60-Amoskeag Mfg. Co. v. Spear, 2 Sand. S. C. 599; Cox, 87; Seb. 100. 61-Fetridge v. Wells, 4 Abb. Pr. 144; 13 How. Pr. 385; Cox, 180; Seb. 144. 62-Falkinburg v. Lucy, 35 Cal. 52; and Eggers v. Hink, 63 Cal. 445. See also Osgood v. Allen (Maine), 1 Holmes, 185; 6 Am. L. T. 20; 3 Off. Gaz. 124; Seb. 410. 63-Lurton, J., in Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 33 C. C. A. 558, 91 Fed. Rep. 376-380. To the same effect see Dennison Mfg. Co. v. Thomas Mfg. Co., 94 Fed. Rep. 651-65€. One who manufactures for the trade, furnishing his goods in cartons having labels which represent the dealer to be the manufacturer, can not enjoin such dealer from the use of the same cartons when they cease to buy the goods from him.64 § 65. Geographical names. The rule that geographical names can not be exclusively appropriated for the purposes of trademark has been recognized from the infancy of trademark law. It was said by the United States Supreme Court that "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. 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. '65 64-Shelley v. Sperry, 121 Mo. App. 429; 99 S. W. Rep. 488. 65-Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 20 L. Ed. 581; 5 Am. L. T. 135; I Off. Gaz. 279; Seb. 327; and to the same effect, see Columbia Mill Co. v. Alcorn, 150 U. S. 460; 37 L. Ed. 1144; Candee, Swan & Co. Deere & Co., 54 Ill. 439; 5 Am. Rep. 125; 4 Am. L. T. 266; 10 Am. L. Reg. N. S. 694; Seb. 339; In re 2 Off. Gaz. 415; Seb. 405; Tolle, V. Osgood v. Allen, 1 Holmes, 185; 6 410; Pa. St. Am. L. 154; 467; 15 Am. Rep. 599; 13 Reg. N. S. 543; 6 Off. Gaz. Seb. 439; Bulloch, Lade & Co. V. Gray, 19 Journ. of Jurisp. 218; 452; Wolfe v. Goulard, 18 Pr. 64; Clinton Met. Paint Seb. How. Co. - C. C. A. 383, 86 Fed. Rep. 605; Wm. Rogers Mfg. Co. v. Rogers & S. Mfg. Co., 11 Fed. Rep. 495; Burgess v. Burgess, 17 Eng. L. & Eq. 257; Brooklyn White Lead Co. v. Masury, 25 Barb. 416; Lea v. Wolff, 13 Abb. Pr. N. S. 389; 15 Id. 1; 46 How. Pr. 157; 1 Am. L. T. N. S. 400; Seb. 407; Carmichel v. Latimer, 11 R. I. 395; Eggers v. Hink, 63 Cal. 445; Dunbar v. Glenn, 42 Wis. 118; AnheuserBusch Brewing Association v. Pisa. 23 Blatchf. 245; Lea v. Deakin, Fed. Case No. 8154, 11 Biss. 23; Pratt's Appeal, 117 Pa. St. 401; Smith v. Walker, 37 Mich. 456; Smith v. Imus, 32 Alb. L. J. 455; Burton v. Stratton, 12 Fed. Rep. 696; Evans v. Van Laer, 32 Fed. Rep. 153: Gabriel V. Sicilian Asphalt Co. (2), 56 N. Y. Supp. 30: Gebbie v. Stitt, 31 N. Y. Supp. 102; Weyman v. Soderberg, 108 Fed. Rep. 63; Telephone Mfg. Co. v. Sumter Mfg. Co., 63 S. C. 313; § 66. As employed by sole owner of a natural product and its place of production. There can be no doubt that, where the owner of a geographical site productive of a salable article is the sole owner, he may have an exclusive right in the name of his site. This rule has been followed in several cases where the proprietor of the commodity was the owner of the place of its production, and the name of that place was a prominent and controlling part of the trademark. Lord Cranworth so held in the case of a wine-grower who used the name of his vineyard as a trademark for his wines." And the use of the words "Congress Water" as designating the product of "Congress Spring" was sustained on the suit of the sole owner of the springs.67 66 § 67. When geographical names will be protected as trademarks. In many cases the use of geographical words has been protected on the ground of unfair competition. It was so held where the complainants applied the word "Durham," the name of a town in North Carolina, to tobacco manufactured by them at that locality. The defendant, whose business was conducted at Richmond, was enjoined from applying the word to tobacco produced by him.68 And the usual rule by which geographical names have been protected against infringers by injunction was thus tersely stated by the Patent Office: "Undoubtedly courts of equity have granted injunctions to restrain the fraudulent use of words of this character; but the grounds of such decisions have been invariably, I think, the fraud of the defendants, and not any exclusive right of the plaintiffs."' 69 a geographical name. Ex parte Oliver, 18 Off. Gaz. 923; Price & Steuart, 59; Esselstyn v. Holmes, 42 Mont. 507; 114 Pac. Rep. 118. 66-Seixo v. Provezende, L. R. 1 Ch. 192; 12 Jur. N. S. 215; 14 L. T. N S. 314; 14 W. R. 357; Seb. 256. 67-Congress & Empire Spring Co. v. High Rock Congress Spring Co., 4 Am. L. T. 168; 10 Abb. Pr. N. S. 348; 6 Am. Rep. 82; 57 Barb. 526; 45 N. Y. 291; Cox, 599; to the same effect, see La Republique Francaise v. Schultz, 57 Fed. Rep. 37; City of Carlsbad v. Kutnow, 68 Fed. Rep. 794; s. c., 71 Fed. Rep. 167: City of Carlsbad v. Schultz, 78 Fed. Rep. 469; Nothcutt v. Turney, 101 Ky. 314; 41 S. W. Rep. 21. 68-Blackwell & Co. v. Dibrell & Co., 3 Hughes, 151; Fed. Case No. 1,475; Price & Steuart, 10. 69-Ex parte Farnum & Co., 18 Off. Gaz. 412; Price & Steuart, 68 Probably a more accurate statement, however, is that of the United States Circuit Court of Appeals in the very well considered opinion in Pillsbury-Washburn Co. v. Eagle: 70 "The distinction, both in the English and American cases, is between those where a geographical name has been adopted and claimed. as a trademark proper, and those where it has been adopted first as merely indicating the place of manufacture, and afterwards, in the course of time, has become a well-known sign and synonym for superior excellence. In the latter class of cases, persons residing at other places will not be permitted to use the geographical name so adopted as a brand or label for similar goods for the mere purpose, by fraud and false representation, of appropriating the good will and business which long continued industry and skill and a generous use of capital has rightfully built up. It will be of no avail in such cases, where the facts are admitted or proven, to allege a want of power in a court of equity to find a remedy." In other words, geographical names can never be appropriated as trademark; but with the development of the law of unfair competition has come the incidental protection of geographical names applied to merchandise, not as technical trademark, but as an indication to the public of the true place of its manufacture. And no manufacturer can defend, any more than he could maintain, a suit in equity, where he is falsely representing the place where his manufacture is conducted. Per contra, it has been held in California that "when a geographical name is not used in a geographical sense but is used in a fictitious sense merely to indicate ownership, independent of location, it may be a good trademark or trade name. 70 The court thus ignores all distinctions between trademark and trade name, without doing any particular harm to the rights of the parties. 386; 70- 86 Fed. Rep. 608; 30 C. C. A. overruling s. c., 82 Fed. Rep. 816. The false use of a geographi cal name will not be tolerated when it is so used as to promote unfair competition and to induce the sale of spurious goods. Collinsplatt v. Finlayson, 88 Fed. Rep. 693. "Whatever might have been the some years ago, we think now it is pretty well settled that the plaintiff, merely on the strength of having been first in the field may put later comers to the trouble of taking such reasonable precautions as are commercially practicable to prevent their lawful doubts that names and advertisements from deceitfully diverting the plaintiff's custom." This was said of the word "Waltham" as applied to watches by Holmes, J., in American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85; 53 N. E. Rep. 141; followed in American Waltham Watch Co. v. Sandman, 96 Fed. Rep. 330. 70a-Nourse, J., in Katschinski v. Keller, 49 Cal. App. 406; 193 Pac. Rep. 587; citing Drake Med. Co. v. Glessner, 68 Ohio St. 337; 67 N. E. Rep. 722, 727; Sanders v. Utt, 16 Mo. App. 322, 326. |
