Early Trademark Law V
Bill Long 11/14/05
What's In a Name? The Howe Scale case, 198 US 118 (1905)
Let's begin our consideration of the issue of names/geographical origin and the Howe case by summarizing and adding to an earlier essay. A basic principle of trademark law is that a mark may be protected if it points to its "origin or ownership." The Howe case examines the "ownership" prong--i.e., the actual people who produced an invention. But, as we have seen, the "origin" idea, which may refer to geographic origin, is tricky. The general rule in the Canal Company case is that one can get a trademark with a geographical name in it, but since that name is often a descriptive word, it may have lost its geographical referent. Sometimes an apparent geographical reference ("Anatolian" liquorice) is really not geographical; other times, where there is a geographical reference ("Akron" cement), another company in the area could also call its cement by that name. If the product is merely descriptive of the place, it cannot be protected by an exclusive trademark. However, even if another person in the same area tries to produce similar goods, that doesn't mean that they always get to use the same name. In the Brooklyn White Lead case, from NY in 1857, the defendant was enjoined not from using the terms "Brooklyn White Lead" in his advertising, even though plaintiff's company was the "Brooklyn White Lead Company," because of the commonness of the product, but the defendant was enjoined from adding the word "Company" to its name. This smacked of fraud. So, from the Court's perspective, geographical names, when they are generally or descriptively used, cannot be trademarked.*
[*I don't believe that my explanation makes complete sense; I think this means, for me, that the Court's explanation of geographical names and trademarks isn't completely consistent.]
Now, to the Howe Case
The situation is different in this 1905 "slam dunk" trademark case concerning a name ("ownership") before the US Supreme Court. At issue was whether the company which produced the "Remington-Sholes" typewriter must be enjoined from using the word "Remington" on its typewriters because a competitor had rights to produce the "Remington Standard" typewriter. As is often the case in "law," it is the "facts" that are determinative in this case. Well, let me rush right ahead to the "law" of the case--the conclusion--before I backtrack to tell the interesting "facts." Because a Remington was behind the "Remington-Sholes" model, "we hold that, in the absence of contract, fraud, or estoppel, any man may use his own name, in all legitimate ways, and as the whole or a part of a corporate name." Since no fraud or conduct constituting unfair competition was shown in the defendant's case, they could continue to use the name "Remington-Sholes."
The Facts of the Case
But it is the facts of this case which make for the interesting reading. In the 1860s, after the death of Eliphalet Remington II, the founder of the famous E. Remington & Sons company which manufactured arms for the US military and others, the company broadened its trade to include, among other things, the manufacture of the typewriter in 1873. Christopher Latham Sholes was responsible for inventing and patenting the most important features of this typewriter. Though called by various names in its first few years, by 1880 the names "Remington" and "Remington Standard" were used of the machine. In 1886 the typewriter branch of the company was sold to Wyckoff, Seamans & Benedict, defendants in this case. WS & B also acquired the exclusive right to the name "Standard Remingon Typewriter." However, upon the sale of the company, the E. Remington Company reserved the right to enter into the typewriter business again after a ten year period.
In 1892 a son of Christopher Sholes, Z.G. Sholes, invented a typewriter and organized a the Z.G.Scholes company in 1893. Later that year two of the sons of Samuel Remington, who was one of the three sons of Eliphalet Remington II, bought 3/4 interest in Sholes' invention. They entered into an agreement where they would produce a typewriter and in 1894 they began to produce the "Remington-Sholes" typewriter. The company experienced financial difficulties and was sold at auction, to be eventually picked up and incorporated in Illinois by others.
Getting to the Decision
Though the Circuit Court had enjoined the use of the name "Remington" in the "Remington-Sholes" typewriter, the Supreme Court held that the name Remington, because it was the actual name of a person involved in the early production of the typewriters, did not infringe upon the trademark of the Remington Standard machine and WS & B. As the Court said:
"But it is well settled that a personal name cannot be exclusively appropriated by any one as against others having a right to use it; and as the name 'Remington' is an ordinary family surname, it was manifestly incapable of exclusive appropriation as a valid trademark, and its registration as such could not in itself give it validity."
The cases cited by the Court for this proposition, are discussed here. The principal justification for this holding is that:
"A man's name is his own property, and he has the same right to its use and enjoyment as he has to that of any other species of property. If such use be a reasonable, honest, and fair exercise of such right, he is no more liable for the incidental damages he may do a rival in trade than he would be for an injury to his neighbor's property by the smoke issuing from his chimney, or for the fall of his neighbor's house by reason of necessary excavations upon his own land."
The common law principle here applied is called damnum absque injuria: damage without legal injury. Thus, even if the makers of the Remington Standard typewriter were damaged, they received no legal injury because a man may use his own name in a trademark sought by him. The use of this specific name differs from the descriptive name "Goodyear's Rubber," which was the product of "Goodyear's Invention" and could therefore be used by all. I'm not sure I understand the difference between these two cases but at least we are beginning to sort out the issues. The next essay develops the name issue in more depth.
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