Early Trademark Law III
Bill Long 11/13/05
An 1888 Case on "Goodyear's Invention"
I got into this idea not because I work professionally in patent or trademark law but because I became fascinated with the history of the term palming off, used by Chief Justice Charles Evans Hughes in the 1935 Schechter case, and it led me back to this case. In addition, I never really understood trademark law (if indeed it is a coherent body of law), except for some obvious principles of confusion and dilution, and I thought I would dip my foot into it through some early cases. This case, Goodyear's Rubber Manufacturing Co. v. Goodyear Rubber Co (128 US 598 (1888)) seems to set out some of the classic issues, so let's get to it.
The plaintiff in the case below was GRC but, since they won, GRMC had to appeal and so GRMC is listed as appellant. I don't know when the Supreme Court adopted its policy about not changing the case name from the way it was originally filed.... In any case, GRC, a NY company established in 1872, alleged that GRMC, a Connecticut Company originally known as the Goodyear's India Rubber Glove Manufacturing Company, had, after 1872, changed its name to GRMC and marketed itself this way so as to take away the business of GRC. Indeed, GRC alleged that GRMC had adoped for its principal sign the name "Goodyear's Rubber Manufacturing Company" (GRMC) in 1882, and that this device "deceives the public and diverts business and customers from the plaintiff, by which it sustains, and, without the interference of this court, will in the future sustain, great loss and damage."
GRMC however, answered with the following statements. They admitted their incorporation under the laws of CT as Goodyear's India Rubber Glove Manufacturing Company in 1847. As early as 1849 the company had obtained a license to manufacture, under the patents of Charles Goodyear, rubber articles. The patents having expired, the original company had, since the mid-1860s, manufactured and sold "all kinds and classes of India rubber goods, treated according to the patents of Goodyear." This CT company itself claimed to be the most prominent "Goodyear-related" company and had become known over the years, in addition to its old name, as GRMC or The Goodyear Company or even GRC. Thus it claimed that it was under its name, officially registered under the GRMC trademark, that the fame of the Goodyear name had spread. It finally alleged that GRC, incorporated late in 1872 in NY, actually was known earlier than 1873 as "Shepperd & Dudley" or some such name, giving the impression that they incorporated as GRC in 1872 to siphon off some of GRMC's business. What was a court to do, faced with these allegations?
Establishing Principles of Early Trademark Law
Justice Stephen Field, writing for the Court, recognized that the original company, Goodyear's India Rubber Glove Manufacturing Company, had adopted a variety of abbreviations since its incorporation in 1847. But the significant point for Field is this:
"But the name of 'Goodyear Rubber Company' is not one capable of exclusive appropriation. 'Goodyear Rubber' are terms descriptive of well-known classes of good produced by the process known as 'Goodyear's Invention.' Names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one" (128 US at 602).
Field then tries to draw an analogy. If a party was to sell wine or raise cotton or grain, and decided to call his company "Wine Company" or "Grain Company," he would in no way impair the rights of someone else coming into the field to engage in a similar business and also call it a "Wine Company." Why? "For the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world." Names of such articles "cannot be adopted as trade-marks, and be thereby appropriated to the exclusive right of any one..." (Id. at 603).
He cited the case where a coal company in the Lackawanna Valley of PA decided to call the coal it mined "Lackawanna coal." Another company also mined coal there, of a different type, calling it also "Lackawanna coal." The court held that geographical names designating districts of the country could not be exclusively appropriated. It would be as if someone had a trademark for "Pennsylvania wheat" or "Virginia tobacco." Thus the taking of a common name or process by one and only one party could "greatly embarrass trade, and secure exclusive rights to individuals in that which is the common right of many."
But what kind of trademarks can therefore be protected? Citing an earlier case, Field wrote that the trademark must, either by itself or by association, point distinctively to the origin or ownership of the article to which it is applied. I am not sure I understand what he is saying here. He seems to be taking a very strong "free trade" stance in the rest of the opinion, suggesting that trademark law, at least as he understands it, should not be used as a way of destroying competition. The more a court would allow a producer sole ability to use a generic name to describe his product, the more it would inhibit the free flow of goods in the country. The greater the tendency to monopoly the greater injury to the public. And, indeed, the only allegation the GRC made in its complaint that remotely related to the notion of confusion (GRMC had received much of GRC's mail and probably would get some of its customers because of name confusion), wasn't even addressed by Field. He probably just saw it a cost of doing business.
Field also didn't see any violation of the common law tort of unfair competition. Since unfair competition at the time only dealt with palming off or misrepresenting your products as those of someone else, and there was no allegation of this activity in the case, a cause of action for unfair competition couldn't stand.
Field isn't very helpful on expositing the law of when there might be trademark infringement or what tests a court could use to discern illegal infringement. He seems to suggest that the benefit of trademarks is to point to origin of a product but this point, other than being obvious, doesn't broach issues of confusion, imitation, dilution or a host of other issues that seem to be relevant. I think that the facts of this case were fuzzy enough--i.e., that both original plaintiff and defendant had good reason to be using the name-- and that the process at issue, vulcanization of rubber, was so well-known by the time that it would have been injuriouis to competition, in Field's mind, to disallow the name of "Goodyear" for one of the companies. But it does make us wonder when a personal name or surname becomes part of a generic description, doesn't it? The next case explores that issue further.
Copyright © 2004-2008 William R.Long