amoskeog manufacturing company v. trainer and 1879 and brown chemical company and goodyear's

Early Trademark Law VI

Bill Long 11/15/05

Of Names and Quality

We have seen in our discussion of the use of the "Remington" name by competing typewriter manufacturers that courts were willing to allow people with the same surname to enter into competition against each other, with their respective trademarks, selling goods even fairly similar to each other's, as long as no indication of fraud or palming off one's goods is evident. Sometimes, however, the surname becomes so identified with the product that it loses its distinctive quality as a pointer to "origin or ownership" and itself becomes a part of the descriptive language of the item. Thus, in the Goodyear's case, the Court concluded that the name "Goodyear" referred to "Goodyear's invention" (i.e., vulcanized rubber), which was now common property of all and therefore did not signify the concept of origin or ownership which the common law required for trademark protection. (I suppose the same could be said of "Dr. Johnson's Yellow Ointment," which had lost it connection with "Dr. Johnson" and now could be used by all).

One further case which illustrates the way that identical names are, absent use of fraud, generally able to be used to describe different products is in Brown Chemical Co. v. Meyer (139 US 540 (1891)). At issue was whether the Brown Chemical Co. (MD), manufacturer of "Brown's Iron Bitters" could enjoin the use of the name "Brown's Iron Tonic" by a MO company, where a Brown had helped develop defendant's product before selling his interest in the product to a certain Lincoln. The "cartons and bottles" of the two concerns were "wholly different in size, color, and appearance." The Court held that, absent indicia of fraud or "palming off" by defendants in their manufacture/sale of the "Iron Tonic," an injunction would not issue. Though there were similarities in the marks that "are perhaps too great to be considered that [a] result of mere accident, the dissimilarities are such as to show an intention to avoid the charge of piracy." The Court articulated the principle of law: "The right of the plaintiff to maintain this bill [i.e., in equity], then, must rest upon the assumption that the words 'Brown's Iron Tonic' bear such a resemblance in sound and appearance to the words 'Brown's Iron Bitters' that the public are liable to be misled." But there was no evidence to suggest palming off. Hence, defendant's name could stand.

Before going on to the classic case holding that "quality" is not protectable by trademark, I should add one point. Trademark law is often difficult to understand because we cannot see what the judges see--that is, we don't have before our eyes the competing labels, product descriptions that were available to them. Thus, it is almost impossible tfor us to make correct decisions on close cases. We can, however, provide principles that formed the basis of the common law of trademarks. And, oh, one last point on the Brown case. What was the name of the Justice writing the opinion, who claimed that the use of the name Brown by two separate concerns didn't in itself suport an injunction? Why, Justice Brown, of course.

Quality

Common law courts have been clear that any reference to quality, such as "fine," or "superfine," or "top of the line," etc. could not become protectable as trademarks. But what is the rule of law when one has a trademark that seems to point both to the company's origin/ownership as well as the quality of the goods? The leading case discussing this theme was Manufacturing Company v. Trainer, 101 US 51 (1879). An interesting, possibly personal, dimension to this case is that it was decided 8-1 against the Amoskeag (NH) Manufacturing Co. and the one dissenter was Justice Nathan Clifford, the senior Justice on the Court, appointed way back before the Civil War by James Buchanan. Clifford was a Maine lawyer who had served as AG in the Polk Adminstration and was a rather rare bird--a Democrat from Northern New England. But, what most don't know (if they know anything about Clifford) was that he was born and raised in Rumney, NH., not far from where the Amoskeag Manufacturing Company called home. You just cannot take it for granite that Justices have no prejudices. And, speaking of prejudices, the majority opinion was written by Justice Stephen Field--a very "free trade" man. Generally if a trademark opinion was written by Field, plaintiff (who seeks an injunction against defendant) loses. So it will be the case here.

At issue here whether the label, or trademark, attached by the Company to its "ticking" (linen covering in which were put feathers and other "stuffing" for matresses) was illegally copied by a similar label for ticking manufactured by Trainer & Sons. Earlier Company versions of the ticking listed the full Company's name as well as the letters "A," "B," "C," or "D," to indicate the quality of the ticking. Later Company versions, however, denoted the highest quality of the ticking as "A.C.A," supposedly standing for "Amoskeog Company [Grade] A." Trainer & Sons also put on its label "A.C.A," to which the Company objected. Thus, the major issue before the Court was to determine if the A.C.A. was a mark pointing both to origin/ownership (the Company) as well as quality (the second "A") and, if it was, whether such a mark would be a protected trademark or not. The Court held that when the company went from "Amoskeog Company" to "A.C." it lost the "origin" claim for the mark, since the letters by themselves really didn't point to an origin. Thus, all that was left, really, was the final "A," which indicated quality, and the quality of a good is not protectable by trademark. Hence the "A.C.A." label was not a trademark for the Company.

Conclusion

As mentioned above, Justice Nathan Clifford dissented, in an opinion twice as long as the majority opinion. Because his opinion helpfully lays out many important principles of common law trademarks, it might be helpful to lay out some of those principles in the next essay.

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