Early Trademark Cases II
Bill Long 11/14/05
Plaintiff's Case in the Canal Case (80 US 311 (1871))
We are patiently examining a classic old trademark case to try to determine, if possible, the "essence" of trademark law before the complexities of modern statutes and the proliferation of modern cases emerged. If we can identify what that "essence" is, we may be able to say we have some secure knowledge about the subject. The problem may arise, however, that under the guise of principles of decision the cases may simply be equitable decisions trying to assess what is "fair" in any instance--i.e., balancing the protection of the trademark holder to "cash in" on his mark with the needs of others to enter into the market competitively. Well, let's hear how the plaintiff's made their case. They argued that they, the Delaware and Hudson Canal Company ("Company") had an exclusive right to the use of the words 'Lackawanna Coal.'
Making the Company's Case
First, they argued that the defendant, Clark, certainly advertised his coal for the purpose of inducing the public to believe that the coal was the Company's coal. He would get more money thereby, and, probably, hurt the Company's business. This, in a word, is fraud. He is passing off others' coal as Company coal. Second, they argued that there was no question but that the Company had a valid trademark in the name. They adopted it as early as 1828 and have continually sold and marketed 'Lackawanna coal' since then. By this appropriation they acquired a title to the name. There is no requirement in law that a word, in order to be a legitimate trademark, must be a new creation. Any word can be chosen so long as it differentiates the product of the owner from that of others. Exceptions to this rule are three: (1) when the word is descriptive of quality, rather than origin or name; (2) when the word is the "proper name" for the article, such as 'Schnapps'; (3) or where it has by general use become the appropriate name of an article, such as "Dr. Johnson's Yellow Ointment" or "Essence of Anchovies."*
[*I confess I don't understand the "appropriate name" exception at this point. Does it mean that anyone could put out "Dr. Johnson's Yellow Ointment" because that appellation now has been loosed from its connection to a person and becomes part of the product? I think that is what it means. If this is the case, can two subsequent vendors sell "Dr. Johnson's Yellow Ointment" as such or do they have to put their name or some distinguishing mark to go along with it, such as "Smith's version of DRYO," etc? And, if two different people then produce DJYO, do they have to produce it identically, or can it become quite different? Can anyone call anything DJYO? Must it be yellow? The other example given by counsel, "Essence of Anchovies" suggests that it is a generic name, known for generations previously, and that therefore no one can have a monopoly in the name. I think I need another essay just to work through the "names" issue...]
None of the three exceptions applied, argued plaintiffs. It wasn't intended to indicate the quality of the coal, nor was it the "naturally appropriate name" for coal but it points to the "origin and ownership" of the substance, which has always been the test of a legitimate trademark. I am not sure if the plaintiffs really dealt with (3) above, for if they did, they might get themselves into trouble. That exception seems to suggest that once something becomes an "appropriate name," whatever that is, it loses all possibility of trademark protection. But what is an "appropriate name"? I suppose that is what this case concerns.
Cases Allegedly Supporting Plaintiff
Plaintiffs brought forward three cases to support their contention that the name 'Lackawanna Coal' should be their exclusive trademark. In Newman v. Alvord, a New York case from 1867, plaintiffs manufactured water-lime from beds near Akron, Erie County (NY) which they called "Akron Cement, Akron Water-lime." The defendants manufactured a similar article from beds in Onandaga County and called it "Onandaga Akron Cement and Water-lime." The court held that the word Akron, as used by the plaintiffs, was their trademark and defendant was enjoined from using it.
A second case, in English Chancery Court from 1864, also had to do with geographical names. McAndrews v. Bassett concerned a certain liquorice manufactured by plaintiff. He adopted the name "Anatolia" for his liquorice because the extract or syrup used in the liquorice came from that place. Defendant also wanted to put out a liquorice with that name, alleging that since the country was common to all, plaintiff had no exclusive right to use of its name. The court held that while property in a word cannot exist for all purposes, it existed when "applied by way of stamp upon a stick of liquorice" (i.e., when "Anatolia" was stamped on the liquorice). Thus, plaintiff argued that even though the coal is not "stamped" Lackawanna when it is produced, the moment it is produced in the market the name 'Lackawanna' becomes united to it as fully as if it had been stamped.
Finally, plaintiffs argued that a case from Chancery Appeals in 1866, Seixo v. Provenzale, supported their point. In that case the plaintiff, Baron de Seixo, was a proprietor of an estate called the Quinta de Seixo, which became renowned for the port wine there produced and sold in London. This port was marketed with a crown or coronet at the top of the bottles and the words "Seixo" on the bottle, so that the port became known as "Crown Seixo." A lessee of land surrounded by the Baron's on three sides claimed that the historic name of his estate was also Seixo (the word "Seixo" designating a region or even the word "stony" or "pebbly") and he also produced a port, with a crown on the bottles, called "Seixo de Cima" (Upper Seixo--designating the place in the valley where his land was). The court held that because the probable effect of the second producer's effort would be to lead people to suspect that they were purchasing the wine of plaintiff rather than what it in fact was, the wine of defendant, defendant would be enjoined from so producing his wine.
The point for plaintiff was clear. No person can bear the symbols to which he has no exclusive right and thereby "personate another person" for the purpose of inducing the public to believe that he is that person or that he is selling the goods of that person. Pretty strong case, don't you think?
The next essay gives the Court's analysis of defendant's case and its decision.
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