Early Trademark Law III
Bill Long 11/14/05
The Court's Decision--Canal Company, 80 US 311 (1871)
The plaintiffs made a strong showing by arguing that several other "geographic specific" products had trademarks that included the geographic name, such as "Akron" cement, or "Anatolia" liquorice or "Seixo" port. In response the defendants claimed the following doctrinal framework for understanding trademarks: (1) that the name must either be an "invented" one (elsewhere called a "merely fancy name") or (2) one which identifies the maker with an article by indicating the person by whom made or the place at which made, that is the ownership or origin of the product. In this statement of the law, defendants agree with plaintiffs. It will be this notion of the "place" at which made which is the focus of the case. The defendants further argued that a person has no right to appropriate a geographical name which others may have equal opportunity to employ for the same purpose. This, then, is the issue. What does it mean that others may have an "equal opportunity" to use a geographical name?
The Court's Opinion
Justice Strong, writing for a unanimous Court, reiterated several points of basic trademark law: that it must point to the origin or ownership of the good, that a generic word may not be a trademark, and that an imputation of quality may not be subject to a trademark. The tradmark must be distinctive in its original signification or it must have "become such by association." Strong lays out the basic problem against which trademark law sets itself: the sale of goods of one manufacturer or vendor as those of another. This was already known as "passing off" in the parlance of the law, and would soon also be known as "palming off" goods. It would be the essence of the commmon law tort of unfair competition, even though that common law tort would be supplemented by a statutory formulation through the Federal Trade Commission Act of the early 20th century. Two evils against which trademark law had to protect itself (and the public), however, were the threat of monopoly and, as indicated above, the use of "a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics" employed as a trademark.
Now, let's get to the big question. What about a geographical name, 'Lackawanna Coal?' How will the Court explain that one? What will be the contours of its legal reasoning? Well, I will give you the revelatory sentence.
"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."
OBVIOUS?! This is cute. Why is a geographical name not available for trademark registration when, in fact, plaintiffs pointed out three cases where it was? Well, because it is "obvious" that it isn't. The Court goes on to explain that the nature is such that it cannot point to the "origin or ownership" of the articles. But how does the Court define "origin?" "Personal origin" is all it says. Now I am confused. Does the word "origin" in the "origin or ownership" phrase simply mean personal origin? That is not the way that either plaintiff or defendant presented the meaning of the word. But that is the way the Court read it. Thus, it argues, "Kentucky hemp" or "Virginia tobacco" could not be protected as trademarks. Such appellations would "greatly embarrass trade."
More on Geography
When one attempts to sell something such as "Lehigh Coal" or "Virginia tobacco" when it truly is that thing, how can there be any fraud involved? Some might suggest that Mr. Clark's "fraud" was in misrepresenting to customers that the "Scranton" or "Pittston" coal was indeed the more expensive variety. But the Court seems to suggest that because it is the same coal that no deception or fraud can take place. With this problem answered, the Court continues. "Nothing is more common than that a manufacturer sends his products to market, designating them by the name of the place they were made." But there is no case, the Court contends, where people producing similar products in the same place have been restrained from using the same name in describing the goods. The court quickly dismisses the Brooklyn White Lead Company case (which I will comment on in the next essay) by saying that fraud was there at issue (i.e., the defendant adopted the word "company" to imitate another competitor selling a similar product in order to defrad the plaintiff). But isn't that what is happening here? Isn't Mr. Clark's effort to misrepresent what he is selling a way for the Company to get fewer profits? Isn't he, in fact "passing off" other product as Company product?
The Court also dismissed the three cases cited by plaintiffs. The appellation "Akron" cement was denied the Onandaga County operation because, in fact, the cement wasn't taken from Akron NY, as was the cement of the other company. The "Anatolian" liquorice was really not a geographical term because what was important was that the word "Anatolian" became stamped on the liquorice wrapper. The stamped word made it distinctive, not the geograpical region. Finally, the reference to Seixo wine by a lessee in the neighborhood of the Baron de Seixo was obviously, in the Court's mind, an attempt to confuse the consumer and siphon off legitimate proceeds that belonged to the Baron.
It seems that the guiding principle of the Court's decision was that since the material was the same (i.e., 'Lackawanna Coal' was the same as "Scranton" or "Pittston" coal) that no fraud could occur. The rule of law, then, from this case is:
"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."
That's enough on one case. Click here for further thoughts on geography and names.
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