Canal Co. v. Clark, 80 U.S. (13 Wall.) 311
Case details
Bluebook Citation
Canal Co. v. Clark, 80 U.S. (13 Wall.) 311
Full caption
Canal Company v. Clark.
Country
United States
Jurisdiction
Federal
Court
Supreme Court of the United States
Majority
Strong (Justice)
Majority
Davis (Justice)
Canal Company v. Clark.
1» To entitle a name to equitable protection as a trade-mark, 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. Accordingly, where the coal of one person who early and long mined coal in a valley of Pennsylvania known as the Lackawanna Valley had een designated and become known as “ Lackawanna coal,” Held, that miners who came in afterwards and mined in another part of the same
*
Baker Kelley, 11 Minnesota, 480.
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.
Appeal from the Circuit Court for the Southern District of New York; the case, which arose on a bill to enjoin the use of an alleged trade-mark, being thus:
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.* In 1825 the Delaware and Hudson Canal Company purchased coal lands in this p. 313region, 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 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. Pinson, New York, 1857, p. 10.
The coal coming from the Lackawanna Valley, and it 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 and 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. 3 J
Lackawanna, and 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 unfrequently 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. L, 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 an<J Scranton coals annually. It was admitted that he lid not have any of the canal company’s coal—that is to say, the origina Lackawanna—for sale.
Dec. 1871.] Canal Company v. Clark. 815
Hereupon the Delaware and 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 trade-mark, 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 trade-mark 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 trade-mark 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 t e names just mentioned, exclusively, or were of a less good quality than the coal of the complainants, and averred e contlary; affirming that they were equally Lackawanna p. 316coal, 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 and 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 trade-mark 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 remarkably well argued on both sides, and with a nice analysis of authorities.
Messrs. E. H. Owen and 8, P. Nash, for the plaintiffs in error:
It cannot be doubted as a fact that the defendant advertises his coal as “Lackawanna coal,” for the purpose of inducing the public to believe that it is in fact the coal produced and sold by the canal company, and with the intention of supplanting the company in the good will of its trade. This is a fraud upon the public, and a fraud also upon the company suing; depriving them of the benefit of any right they have in the word Lackawanna, as a trader mark.
Now, the canal company has a valid title to the use of the word Lackawanna as a trade-mark. They were the first to adopt and impose upon it the office of becoming and being thereafter the name for their coal; so adopting and appropriating it as early as 1828, at the commencement of their business. The first coal which they brought to market was called and sold by the name of Lackawanna coal, and all the coal which they have hitherto brought to market has been sold and dealt in by that name and by none other. By such original appropriation of the word “ Lackawanna, they acquired a title thereto, and the right to its exclusive use in combination with the word “coal,” and thereupon and thereafter, by the continued use thereof, the new compound wor
“ Lackawanna coal ” became, and was, and is, the name and trade-mark for their coal, not limited by territorial bounds.* It is not necessary that a word which may be adopted as a name and trade-mark should be a new creation never before known or used, to entitle it to be so adopted. Any word in common use may be taken, if its application be original, and so far peculiar as to be capable, when known to the public, of distinguishing the property of the party so adopting it, and to which it may be attached, from that of other parties. In such case the right of the public to use the word is not abridged. It can be used as originally and in any and every other way imaginable, except in its peculiar combination with the word “ coal.”
The exceptions to the right to appropriate a word for a trade-mark are, that it cannot be done when the word adopted is merely used as descriptive of quality, as in the case of Stokes y. Landgraff,} or of Corwin v. Daly£ or of Amoskeag Manufacturing Company v. Spear or where it is the proper name for the article, as in the case of the “Schnapps,” the subject of controversy in Wolfe v. G-oulard; or where it has by general use become the appropriate name of an article, which all persons manufacturing the same may use, as in the case of “Dr. Johnson’s Yellow Ointment,or that of “The Essence of Anchovies.”**
The word Lackawanna, as used by the company, does not come within these exceptions. It is not the naturally appropriate name for coal. In its original sense it did not niean coal, nor had it become by previous use the name of coal, nor does it imply, nor was it intended to indicate the quality of coal, but it was adopted for and became, and was, and still is, the specific name thereof, indicating its origin and ownership, and by which it could be bought and sold in market.
*
Derringer v. Plate, 29 California, 292. f 17 Barbour, 608. + 7 Bosworth, 222. J 8 ®uPreme Court, 599. || 18 Howai i's Practice, 64. k * ^1Dgleton ”• Bolton, 3 Douglas, 293. Burgess v. Burgess, 17 English Law and Equity, 257.
The defendant does not pretend that he originated the name, or that any other company or person adopted or used it as a specific name for coal prior to the time when the canal company adopted it. Nor has he any color of right to sell his coal by the name of “Lackawanna coal/’from the mere fact that it comes from what is commonly known as the Lackawanna region; more especially since it does not come from the company’s mines, nor through them as producers, and is not, in fact, the coal known in market as Lackawanna coal. That the different varieties, Pittston, Scranton, and Lackawanna, may be occasionally grouped together in loose parlance, or in the ultimate head of a statistical exhibit, under the general name of Lackawanna coal, proves nothing. Different varieties of Lehigh and Schuylkill coal are grouped under those two general names. So different varieties of Ger-man wines are, and called Rhine wines, but this would give no right to any one to use the peculiar and specific name of one kind of coal or wine as and for the name of another produced by a different person.
Various authorities support our view. To three as particularly doing so we refer the court.
The first is Newman v. Alvord.* There the plaintiffs manufactured water-lime from beds near Akron, Erie County, New York, which they called “ Akron Cement, Akron Water-lime,” and the defendant manufactured a similar article from his beds near Syracuse, Onondaga County, and called his “ Onondaga Akron Cement and Water-lime, and it was held that the word Akron, as used by the plaintiffs, was their trade-mark, and that they were entitled to be piotected by injunction in its use.
The next case is McAndrews v. Bassett.} There it appeared that the plaintiff had first adopted and used the wor “Anatolia,” as a name for his liquorice, and the defendant insisted upon his right to use that word also as the name o his liquorice, because it was the name of a country, t e use of which, as he alleged, was common to all, and there ore
* 19 Barbour, 588. t 10 Jurist> new serieS’ p. 319the plaintiff had no exclusive right to its use; but the court pronounced the argument a u fallacy,” and stated that although property in a word cannot exist for all purposes, yet it will exist when applied by way of stamp upon a stick of liquorice, the moment the article thus stamped goes into market. In the case at bar, although the coal cannot be stamped, yet the moment it is produced in market the name Lackawanna becomes united to it as fully as if it had been stamped thereon. There is no difference in principle between the two cases.
The third case is Seixo v. Provezende* where it appeared that the plaintiff, Baron de Seixo, was the proprietor of an estate called the Quinta de Seixo, which was celebrated for the port wine produced from it, and which he consigned to London for sale, placing upon the heads of the casks various marks, and at the bung a crown with the word, “ Seixo,” and so his wine became known as “ Crown Seixo.” The defendant being the lessee of an adjoining estate known, also, as the Quinta de Seixo, sent his wine to London with certain marks on the head of the casks, and at the bung thereof a crown and the words, “ Seixo de Cima ” (Upper Seixo), and he claimed the right so to use the name Seixo, on the ground that he was owner or lessee of a vineyard adjoining the plaintiff’s, also of several small vineyards on the opposite side of the river, parts of which were known by the name of “ Seixo,” meaning stony or pebbly. The court held, that even conceding that, it did not justify the defendant in adopting a device or brand, the probable effect of which was to lead the public to suppose when purchasing his wine, that they were purchasing the wine produced from the plaintiff’s vineyard.
Our whole case is summed up in Lord Langdale’s language in Croft v. Dayf His lordship there says:
No man has a right to sell his own goods as the goods of another. You may express the same principle in different form, an say that no man has a right to dress himself in colors, or
Law Reports, 1 Chancery Appeals, 192.
f 7 Beavan, 84. p. 320adopt and bear symbols to which he has no peculiar or exclusive right, and thereby personate another person for the purpose of inducing the public to suppose either that he is that other person, or that he is connected with, or selling the manufacture of such other person, while he is really selling bis own. It is perfectly manifest that to do these things is to commit a fraud, and a very gross fraud.”
But to establish the defendant’s fraud and deceit, it is not even necessary to show that he sells his coal as and for that of the appellants. It is sufficient that he intentionally sells it by the name which he knows the appellants had previously adopted as the name of their coal.
Mr. H. E. Knox, contra, with a brief of Messrs. Fullerton, Knox, and Rudd, relied on the following general propositions of law established by principle or by authorities, which he cited.
1. That to constitute a trade-mark in a name, the name must be either (1) an invented one, or (2) one which identifies the maker with the article by indicating the person by whom made, or the place at which made, in other words, the name must be either a merely fancy name or a name indicating ownership or origin.
2. That a person has no right to appropriate a name which others may apply with equal truth, and have an equal right to employ for the same purpose, such as a geographical name, as in this case.
3. That the basis of the action of a court of equity to restrain the infringement of the right to a trade-mark is fraud or imposition on the part of the defendant, fraud as against the plaintiff, or imposition on the public.
4. That the name must be used distinctively and exclusively in order to give a title to it.
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 p. 321or trade-mark for the coal mined by them and transported over their railroad and canal to market.
The averments of the bill* 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 trade-mark 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 wras 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, and 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 trade-mark for their coal, but that it had never before been used, or applied in combination with the word “coal,” as a name or trade-mark for any kind of coal, and it is the combination of the word Lackawanna with the word coal that constitutes the trade-mark to the exclusive use of which they assert a right.
o
*
Quoted supra, p. 315. ▼OL. XIII.
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 trade marks 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 trade-mark, or rather in the use of a trade-mark 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 trade-mark 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, a 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 trade-name should be a new creation, never before known or used, there are some limits to the right of selection. Tina will be manifest when it is considered that in all cases whe> e rights to the exclusive use of a trade-mark are invaded, it is invariably held that the essence of the wrong consists in t ie sale of the goods of one manufacturer or vendor as those o another; and that it is only when this false representation is directly or indirectly made that the party who appeas to a court of equity can have relief. This is the doctrine o a p. 323the authorities.* Hence the trade-mark 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 trade-mark 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 trade-mark or trade-name 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 trade-mark and the exclusive use of it be entitled to legal protection. As we said in the ivell-considered case of The Amoskeag Manufacturing Company v. Spear,\ “ the owner of an original tiade-mark has an undoubted right to be protected in the
599 ’^tlos^eaS Manufacturing Co. v. Spear, 2 Sandford’s Supreme Court,
5 Boardman v. Meriden Britannia Company, 35 Connecticut, 402; Fa-
ina®. Silverlock, 39 English Law and Equity, 514. cedin s Supreme Court, 599, quoted supra, in the note just pre- p. 324exclusive use of all the marks, forms, or symbols, tjiat 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.”*
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 trade-marks; could any one 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 t e common right of many. It can be permitted only when the reasons that lie at the foundation of the protection given to trade-marks 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 w’hich in truth is such, or that there is any attempt to appropriate the entei p. 325prise 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,* 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 trade-mark, 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 lu the same article, and both manufactured it at Brooklyn, each had the same right to describe it as Brooklyn white lead.
*
Vide Wolfe v. Goulard, 18 Howard's Practice Reports, 64; Petri ge^- Wells, 4 Abbott’s Practice Reports, 144; Town v. Stetson, 5 Id. N- » Phalon v. Wright, 5 Phillips, 464; Singleton v. Bolton, 3 Douglas, • Perry v. Truefltt, 6 Beavan, 66; Canham v. Jones, 2 Vesey & Bi-am, Millington v. Fox, 3 Milne & Craig, 338.
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 trade-mark.
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
* 25 Barbour, 416.
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 any one 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 iu this case determines that a right to use the name of a region of country as a trade-mark for an article may be acquired, to the exclusion of others who produce or sell a similar article coming from the same region.
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 trade-mark for any article, much less that it could be protected as a trade-mark 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 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 trade-mark 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 Belling coal not obtained from the plaintiffs, not mined or r>ught to market by them, but coal which he purchased p. 328from the Pennsylvania Coal Company, or from the Delaware, Lackawanna, and Western Railroad Company. He has advertised and soid 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, and 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, accordino" 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 pretence. 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.
The Patapsco.
Supplies furnished to a ship in a foreign port and necessary to enable her to complete her voyage, and actually so used by her, constitute a lien, unless it can be inferred that the master had funds or the owners had credit; a presumption difficult to make when the owner is greatly embarrassed, and is raising money in the port where the vessel is, by mortgage of other vessels owned by him. The lien is of a high character, and when once to be inferred is removed only by proof which actually displaces it. Entries in a journal, and in a ledger, charging apparently the owners rather than the vessel—proof of the form of entry in the day-book not appearing, owing to its being dispensed with by the material-man—held not sufficient to displace the lien.
Appeal from the Circuit Court for the Southern District of New York; the case being thus: Boyce, a coal dealer in Baltimore, filed a libel against the steamer Patapsco, in the District Court at New York, to recover a demand for six separate supplies of coal furnished between the 3d of February and the 26th of March, 1866, to the steamer. One Borland intervened as claimant. The question was whether the coal had been furnished on the credit of the vessel or on that of her owners only. The facts, as the court assumed them from the weight of the evidence, itself somewhat inconsistent, were thus: The Commercial Steamboat Company, a corporation of Rhode Island, owned and chartered certain steamers, the Kingfisher, &c., and used them as a line of steamers from New York to Baltimore. The Patapsco was chartered by the company to run on the line, and registered at New York in the individual name of one Bacon, president of the company; though the company controlled her. The company
bad an agent at Baltimore, and the course of dealing was as follows:
When the steamers would arrive at Baltimore, their engineers would inform this agent of the amount of coal they needed for their different vessels. Thereupon the agent would fill up a printed circular directed to Boyce, requesting him to furnish “ with invoice,” to that steamer, by name p. 330(in this case the Patapsco), so many tons of coal; saying nothing about charging anybody. Boyce would then fill up a printed order to his clerk, directing him to furnish the coal to the steamer named. On receipt of this latter order, the coal would be delivered on board the steamer. At the end of a month a bill would be made of all the deliverances to all the boats. The object of making out a general bill at the end of each month, it appeared, was to avoid a multiplication of bills, and for the sake of convenience.
The entries in the libellant’s journal were thus—one example showing all :
Baltimore, March, 1866.
Commercial St’b’t Co. :
80 tons Geo. C’k, st’r Kingfisher, $7, .... $560
25 “ il “ “ Patapsco, 7, . . . . 175
80 “ “ “ “ Kingfisher, 7, . . . . 560
42 “ “ “ “ Patapsco, 7, . . • . 294
$1,589
And in his ledger they were thus: Commercial St’b’t Co. Dr.
1866.
Jan’y 30th. To coal ac.,.................................. $2,896 36 “ 11 “ bituminous ac., ..... 2,96360
Feb. “ “ coal ac, . . . . . . 790
Feb. “ bituminous ac.,.............................2,416 10 Mar. “ coal ac.,.................................... 1,550
“ “ bituminous ac.,.............................1,589
April lt coal ac., . . . . . . 1,46250
“ “ bituminous ac.,..................................55
May 16. “ cash,.................................................. 39 10 $13,761 66
Cr.
Feb. 5th. Bycash, . . . . . . • $3,000
“ 9th. ““...............................................................1,000
“ 15th. ““......................................................... 1,849 96 Mar. 30th. “coal ac.,..................................................... 73 50
May 5th. “cash,...............................................................13® JuneSOtV ““........................................................ 3,008 41
“ “ “ balance, ....... 4,693 79 $13,761 66
Dr.
To balance,.................................................... • • • $4,693 79 p. 331Dec. 1871.] The Patapsco. 381
The form of entries in the libellant’s day-book did not appear; the claimant waiving the production of it, and the bills rendered to the company were not produced.
The coal was sold at the lowest price, and it was necessary for the Patapsco to make her trips and was used by her in making them. The agent of the steamship company stated that “ the coal bought for the Patapsco was ordered for this steamer expressly, but on account of the Commercial Steamship Company, the same as all coal was ordered and bought for the several steamers constituting the line.” “ The owners or charterers” he added, “were not known in the transaction, but the steamer was supposed to belong to the Commercial Steamboat Company by the parties who furnished the coal.”
During the whole time that this coal was furnished, the steamboat company was in an embarrassed state. And on the 3d of February, on which day the first item of the coal for which the steamer was libelled, was furnished, the steamship company executed six promissory notes for $7500 each —$45,000 in all—to the Baltimore and Ohio Railroad Company; following them immediately, and by the 6th, by mortgages on three of their steamers to secure payment. And it owed a balance of $25,800 to the Neptune Steamboat Company on the 1st February, 1866, so much remaining due for money laid out, paid, or advanced in the preceding year.
On the 2d of April, 1866, nine days after the last item of coal furnished to the Patapsco, the registered owner, Bacon, executed a bill of sale of her to Borland, already mentioned as the claimant in the case, to secure to him a debt of $10,500. And on the 10th following, the company failed entirely; the failure being followed by attachments to a very large amount, much of it like the $25,800 already mentioned for money lent or debts due prior to the 3d February, 1866; and the result being a general break up of the company in which the creditors got but a small portion of their claims from the whole effects of the corporation.
It was in virtue of his bill of sale above mentioned that orland contested the libellant’s claim.
Argument against the lien.
The District Court dismissed the libel; holding that there was no credit to the vessel. The Circuit Court, on appeal, held that there was, and reversed the decree. From this reversal Borland appealed to this court.
Mr. C. Donohue, for, the appellant:
When material-men mean to charge a vessel specifically, they have, as is perfectly well known, a mode of making their entry which shows that they do charge it. The vessel is charged by name. In this case the charge would have been thus:
The Steamer Patapsco, Dr.
Or,
The Steamer Patapsco (Commercial Steamboat Company owners),
Dr.
Now the charge here, in the only books produced, is not in this form, but in another and a different form; one showing that the reliance was on the company navigating the vessel and ordering the coal; and on it alone. The fact that the particular vessel to which the coal was furnished is mentioned in the charge against the company does not prove an intent to charge the vessel, but only that the material-man was careful to identify the transaction.
The only possible answer to our view is, that the company was so embarrassed that it cannot be presumed that it was looked to. But this is no answer at all, unless you show that Boyce knew of the embarrassment, or at least suspected it. There is no proof that he did either. All presumptions are the other way. The vessels were pursuing their regular trips. To the world everything appeared as usual. Boyce had been furnishing coal before, and had been paid, without question and without any recourse against the vessels. The vessels of the company were registered in places far away from Baltimore, and a hundred mortgages might have been executed in those places and Boyce never hear of one. The company did not proclaim that it had borrowed $45,000 o the Baltimore and Ohio Railroad. Even if Boyce knew that p. 333it did so borrow, the case is not altered, for the fact of the loan did not prove that the coal would not be paid for. Contrariwise, it showed that the steamboat company was in possession of ready money. The presumption would be that it meant to take up small and floating debts by a large and more permanent loan. A company might occasionally borrow in this way and yet be doing a most successful business.
This court has already gone very far in sustaining secret liens on vessels. To go further will seriously embarrass the transfer of this sort of property.
Mr. D. McMahon, contra.
Mr. Justice DAVIS delivered the opinion of the court.
Whether the coal was furnished on the credit of the vessel, or of the owners, is the only point of inquiry in this case. The case itself is not without its embarrassments, for the evidence, in some of its aspects, is not consistent with either theory, but the weight of it, in our opinion, enables us to assert the lien against the ship.
It is undisputed that the Patapsco was in a foreign port, and that the coal was ordered for her, specifically by name, and delivered to the oflicers in charge of her. It is equally free from dispute that the supply of coal was necessary—indeed, indispensable—to enable her to make hei voyage at all. In such a case the inference is, that the credit was given to the vessel, unless it can be inferred that the master had funds, or the owners had credit, and that the material-Inan knew of this, or knew such facts as should have put him on inquiry.* There is no reason to suppose that the master had funds, or the owners of the line credit, nor that the libellant was guilty of laches. On the contrary, it is in pi oof that the company which owned the line of steamships was, at the date of these transactions, hopelessly insolvent, and were borrowing large sums of money on a mortgage of their steamers, away from home, and in the very city where t e libellant resided. It would be strange if the libellant p. 334did. not know this condition of things, and, in the absence of proof on the subject, it is a reasonable inference that he did. If he had this knowledge it would be a violent presumption to suppose that he relied on the credit of the company at all for the supplies which he furnished. The company running the steamers was a distant corporation, of no established name, and without personal liability in case the enterprise recently undertaken should prove a failure, and it is hard to believe that a large and intelligent coal merchant in Baltimore, in dealing with this corporation, intended to renounce his claim against the steamers in case he was not paid. It is very clear that there was no credit to the company at the time of sale, because the coal was sold for cash at the lowest market price. And when the libellant waived his privilege of cash on delivery, and put the coal on board the steamship, the presumption of law would be that he thereby gave credit to the steamship, and not to the owners thereof, inasmuch as the supplies were furnished in a foreign port.
*
The Lulu, 10 Wallace, 192.
If the credit was to the vessel there is a lien, and the burden of displacing it is on the claimant. He must show, affirmatively, that the credit was given to the company to the exclusion of a credit to the vessel. This he seeks to do by the form of charge in the libellant’s journal and ledger. If it be conceded that these entries tend to support this position, they are far from being conclusive evidence on the subject. Entries in books are always explainable, and the truth of the transaction can be shown independent of them. The form of charge in any book of original entries does not appear, as the day-book was not called for by the claimants, nor are the “invoices” which the libellant was directed to furnish with the coal produced. But, from the form ot entry in the journal itself (where the amount furnished to each vessel is set opposite to its name), we are led to the conclusion that the day-book entries which are thus jouinalized were debited to each steamer by name. If this e so, the journal entries are not inconsistent with the idea of the credit being given on the security of the ship. More p. 335especially is this apparent when it is proven that the reason why monthly accounts were made out to the steamboat company in bulk was for the sake of convenience, and to save a useless accumulation of bills. There is nothing besides this journal entry to indicate that the coal was furnished on the personal credit of the company; and, as the other facts in the case are in favor of a charge direct to the steamship, we do not think the legal inference of credit to the ship is removed.
The lien of material-men for supplies in a foreign port is of so high a character that, in the case of The St. Jago de Cuba* it was protected, along with that of seamen’s wages, against a forfeiture which had accrued to the United States; and the recent decisions in this court have had the effect to place this lien on a more substantial footing than some previous cases seem to have left it.f
On the whole, while we concede that the case is not free from difficulty, we are not disposed to disturb the decree of the Circuit Court, in any particular. It is accordingly
Affirmed.