The term "trademark" means a distinctive mark of authenticity
through which the products of particular manufacturers or the
vendible commodities of particular merchants may be distinguished
from those of others.
As its office is to point out distinctively the origin or
ownership of the articles
Page 179 U. S. 666
to which it is affixed, no sign or form of words can be
appropriated as a valid trademark which, from the fact conveyed by
its primary meaning, others may employ with equal truth and with
equal right, for the same purpose.
Words which are merely descriptive of the place where an article
is manufactured cannot be monopolized as a trademark, and this is
true of the word "Elgin," as in controversy in this case.
Where such a word has acquired a secondary signification in
connection with its use, protection from imposition and fraud will
be afforded by the courts, while at the same time it may not be
susceptible of registration as a trademark under the Act of
Congress of March 3, 1881.
The parties to this suit being all citizens of the same state,
and the word in controversy being a geographical name which could
not be properly registered as a valid trademark under the statute,
the circuit court had no jurisdiction.
In view of this conclusion and of the fact that the
constitutionality of the act of Congress was not passed on by the
court below, that subject is not considered.
This was a bill filed in the Circuit Court of the United States
for the Northern District of Illinois by the Elgin National Watch
Company, a corporation organized under the laws of the State of
Illinois, having its principal place of business at Elgin and its
office in Chicago in that state, against the Illinois Watch case
Company, also a corporation of Illinois, with its principal place
of business at Elgin, and certain other defendants, citizens of
Illinois.
The bill alleged:
"That prior to the 11th day of April, A.D. 1868, your orator was
engaged in the business of manufacturing watches at Elgin,
Illinois, which was then a small town containing no other
manufactory of watches or watch cases; that your orator had built
up at said town a very large business in the manufacture of watches
and watch movements, and that said watches and watch movements so
made by your orator had become known all over the world, and had
been largely sold and used not only in this but in foreign
countries."
". . . That at and before said 11th day of April, A.D. 1868,
your orator had adopted the word 'Elgin' as a trademark for its
said watches and watch movements; that said trademark was marked
upon the watches and watch movements
Page 179 U. S. 667
made by your orator, both upon those which entered into commerce
in this country and those which were exported to and sold in
foreign countries; that your orator's watches became known all over
the world as Elgin watches, and their origin and source, as a
product of your orator's manufacture, were distinguished from those
of all other watches manufactured in any part of the world by said
distinguishing word or trademark 'Elgin;' that from said 11th day
of April, A.D. 1868, to the present time, your orator, both in the
goods manufactured and sold by it in this country and those
exported by it to and sold in foreign countries, has continued to
use said trademark upon its watches and watch movements, and is
still using it, and that said trademark has always served and still
serves to distinguish your orator's product from that of all other
manufacturers."
". . That at the time of its adoption of said trademark, no
other person, firm, or corporation engaged in the manufacture or
sale of watches was using the word 'Elgin' as a trademark or as a
designation to designate its goods from those of other
manufacturers, and that your orator had the legal right to
appropriate and use the said word as its lawful trademark for its
watches and watch movements."
". . That the watches and watch movements made by your orator
have achieved a very great reputation throughout the world, and
that such reputation is of great commercial value to your orator in
its business aforesaid."
It was further averred
"that, on the 19th day of July, A.D. 1892, under the act of
Congress relating to the registration of trademarks, your orator
caused said trademark to be duly registered in the Patent Office of
the United States according to law, as by the certificate of said
registration, or a copy thereof, duly certified by the Commissioner
of Patents, here in court to be produced, will more fully and at
large appear."
The bill charged that defendants had infringed the rights of
complainant by engraving or otherwise affixing the word "Elgin" to
the watch cases made and sold by them; that such watch cases were
adapted to receiving watch movements
Page 179 U. S. 668
of different construction from those made by complainant; that
inferior watch movements were liable to be and often were encased
in them, and that, when so encased, the entire watch, including
both movement and case, appeared upon the market with the word
"Elgin" upon it, thereby leading the public to believe that the
watch as an entirety was made by the complainant, and enabling
parties wrongfully using complainant's trademark to profit by the
great reputation of complainant, to palm off other and inferior
goods as goods made by complainant, to injure the reputation of
complainant as a watchmaker, and to deprive it of a portion of the
business and patronage which it would otherwise receive from the
public, to the irreparable damage of complainant.
The prayer was for damages and for an injunction to restrain
defendants
"from directly or indirectly making or selling any watch case or
watch cases marked with your orator's said trademark, and from
using your orator's said trademark in any way upon watches or watch
cases or in the defendants' printed advertisements, circulars,
labels, or the boxes or packages in which their said watch cases
are put or exposed for sale."
A demurrer having been overruled, defendants answered denying
the legality of the registration of the alleged trademark, and any
attempt on their part to deceive the public, or the doing of
anything they did not have the legal right to do, and asserting
that they had never manufactured or offered for sale watches or
watch movements; that they manufactured at Elgin watch cases only;
that complainant had never manufactured or sold watch cases with
the word "Elgin" on them; that the business of the two companies
was separate and distinct, and that whenever the defendant company
had used the word "Elgin," it had usually, if not invariably, been
done in connection with some other word, as "Elgin Giant" or "Elgin
Commander" or "Elgin Tiger," or some other word in combination with
the word "Elgin;" that defendant company had never used the word
"Elgin" alone or separately as registered by complainant upon goods
exported to foreign nations or used in foreign commerce, but only
in domestic commerce, and to inform the public of the place where
watch cases of the defendant company
Page 179 U. S. 669
were manufactured; that such watches were sold upon a guaranty
running for a number of years, so that it was necessary to indicate
the name of the location where defendant company was carrying on
its business, that purchasers might be able to find the company in
case it became necessary to call upon it to make good its
guaranties,
"and that, owing to the distinct lines of business in which the
complainant and the defendant company are engaged, no
misunderstanding or confusion has arisen or can arise, as these
defendants are informed and believe."
It was further alleged
"that the word 'Elgin,' being a geographical name or word
indicating the name of a prominent manufacturing city in which any
manufacturer of watches, watch movements, or watch cases is at
liberty to locate and carry on his business, is not appropriable by
any single manufacturing person, firm, or corporation, but is open
as of common right to the use of any person, firm, or corporation
carrying on business at the City of Elgin."
Replication was filed, proofs taken, and a hearing had. By leave
of court, complainant amended its bill, alleging that the watch
cases so manufactured and marked by defendants in violation of
complainant's rights were intended by defendants to be sold in
foreign countries, and were in fact exported to and sold in foreign
countries.
The circuit court decreed that the use of the word "Elgin,"
whether alone or in connection with other words, was a violation
and infringement of complainant's exclusive rights in the premises,
and that an injunction issue restraining the use of the word, alone
or in connection with other words or devices, upon watches, or
watch cases, or packages containing watches or watch cases, going
into commerce with foreign nations or with the Indian tribes, in
such a way as to be liable to cause purchasers or others to mistake
said watches or the watch movements incased in said watch cases for
watches or watch movements manufactured by complainant. 89 F. 487.
The case having been carried to the court of appeals, that court
reversed the decree of the circuit court and remanded the cause
with instructions to dismiss the bill. 94 F. 667.
Page 179 U. S. 670
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
The circuit court of appeals held that the bill must be
dismissed for want of jurisdiction. The parties to the suit were
all citizens of Illinois, and the court was of opinion that it
could not be maintained under the Act of March 3, 1881, 21 Stat.
502, c. 138.
In the
Trademark Cases, 100 U. S.
82, this Court held that the Act of July 8, 1870,
carried forward into sections 4937 to 4947 of the Revised Statutes,
was void for want of constitutional authority inasmuch as it was so
framed that its provisions were applicable to that which was
subject to the control of Congress. The cases involved certain
indictments under the Act of August 14, 1876, "to punish the
counterfeiting of trademark goods and the sale or dealing in of
counterfeit trademark goods," and the opinion treated chiefly of
the act of 1870 and the civil remedy which that act provided,
because, as Mr. Justice Miller observed,
"the criminal offenses described in the act of 1876 are, by
their express terms, solely referable to frauds, counterfeits, and
unlawful use of trademarks which were registered under the
provisions of the former act. If that act is unconstitutional, so
that the registration under it confers no lawful right, then the
criminal enactment intended to protect that right falls with
it."
In its opinion, the court, adhering to the settled rule to
decide no more than is necessary to the case in hand, was careful
to say that the question
"whether the trademark bears such a relation to commerce in
general terms as to bring it within congressional control, when
used or applied to the classes of commerce which fall within that
control, is one which, in the
Page 179 U. S. 671
present case, we propose to leave undecided."
And, further:
"In what we have here said we wish to be understood as leaving
untouched the whole question of the treatymaking power over
trademarks and of the duty of Congress to pass any laws necessary
to carry treaties into effect."
The Act of March 3, 1881, followed. By its first section, it was
provided that
"owners of trademarks used in commerce with foreign nations or
with the Indian tribes, provided such owners shall be domiciled in
the United States, or located in any foreign country or tribes,
which by treaty, convention, or law, afford similar privileges to
citizens of the United States, may obtain registration of such
trademarks by complying with"
certain specified requirements.
By the second section the application prescribed by the
first
"must, in order to create any right whatever in favor of the
party filing it, be accompanied by a written declaration . . . that
such party has at the time a right to the use of the trademark
sought to be registered, and that no other person, firm, or
corporation has the right to such use, either in the identical form
or in any such near resemblance thereto as might be calculated to
deceive; that such trademark is used in commerce with foreign
nations or Indian tribes, as above indicated. . . ."
The third section provided that
"no alleged trademark shall be registered unless the same appear
to be lawfully used as such by the applicant in foreign commerce or
commerce with Indian tribes as before mentioned, or is within the
provision of a treaty, convention, or declaration with a foreign
power, nor which is merely the name of the applicant, nor which is
identical with a registered or known trademark owned by another and
appropriate to the same class of merchandise, or which so nearly
resembles some other person's lawful trademark as to be likely to
cause confusion or mistake in the mind of the public or to deceive
purchasers."
By the fourth section, certificates of registration of
trademarks were to be issued, copies of which and of trademarks and
declarations filed therewith should be evidence "in any suit in
which such trademarks shall be brought in controversy," and by
section 5 it was provided that the certificate of registry
Page 179 U. S. 672
should remain in force for thirty years from its date, and might
be renewed for a like period. By the eleventh section, nothing in
the act was to be construed
"to give cognizance to any court of the United States in an
action or suit between citizens of the same state unless the
trademark in controversy is used on goods intended to be
transported to a foreign country or in lawful commercial
intercourse with an Indian tribe."
The seventh section was as follows:
"That registration of a trademark shall be
prima facie
evidence of ownership. Any person who shall reproduce, counterfeit,
copy, or colorably imitate any trademark registered under this act,
and affix the same to merchandise of substantially the same
descriptive properties as those described in the registration,
shall be liable to an action on the case for damages for the
wrongful use of said trademark at the suit of the owner thereof,
and the party aggrieved shall also have his remedy according to the
course of equity to enjoin the wrongful use of such trademark used
in foreign commerce or commerce with Indian tribes as aforesaid,
and to recover compensation therefor in any court having
jurisdiction over the person guilty of such wrongful act, and
courts of the United States shall have original and appellate
jurisdiction in such cases, without regard to the amount in
controversy."
Thus it is seen that, under the act, registration is
prima
facie evidence of ownership; that the certificate is evidence
in any suit or action in which the registered trademark is brought
in controversy; that the act practically enables treaty
stipulations to be carried out, and affords the basis for judicial
redress for infringement in foreign countries, where such redress
cannot ordinarily be had without registration, as well as in the
courts of the United States, when jurisdiction would not otherwise
exist. For it is the assertion of rights derived under the act
which gives cognizance to courts of the United States when the
controversy is between citizens of the same state, though the
benefits of the act cannot be availed of if the alleged trademark
is not susceptible of exclusive ownership as such, and not
therefore of registration.
Trademarks are not defined by the act, which assumes their
Page 179 U. S. 673
existence and ownership and provides for a verified declaration
by applicants for registration that they have the exclusive right
to the particular trademark sought to be registered.
The term has been in use from a very early date, and generally
speaking means a distinctive mark of authenticity through which the
products of particular manufacturers or the vendible commodities of
particular merchants may be distinguished from those of others. It
may consist in any symbol or in any form of words, but as its
office is to point out distinctively the origin or ownership of the
articles to which it is affixed, it follows that no sign or form of
words can be appropriated as a valid trademark which, from the
nature of the fact conveyed by its primary meaning, others may
employ with equal truth and with equal right for the same
purpose.
And the general rule is thoroughly established that words that
do not in and of themselves indicate anything in the nature of
origin, manufacture, or ownership, but are merely descriptive of
the place where an article is manufactured or produced, cannot be
monopolized as a trademark.
Canal Company v.
Clark, 13 Wall. 311;
Brown Chemical Company v.
Meyer, 139 U. S. 540;
Columbia Mill Company v. Alcorn, 150 U.
S. 460, and cases cited.
The word "Elgin" is and has been for very many years the name of
a well known manufacturing city in Illinois. The factory and
business of appellees were located at Elgin, and in describing
their watch cases as made there, it is not denied that they told
the literal truth so far as that fact was concerned, and this they
were entitled to do according to the general rule. Obviously, to
hold that appellant had obtained the exclusive right to use the
name "Elgin" would be to disregard the doctrine characterized by
Mr. Justice Strong in
Canal Company v. Clark as sound
doctrine,
"that no one can apply the name of a district or country to a
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."
But it is contended that the name "Elgin" had acquired a
Page 179 U. S. 674
secondary signification in connection with its use by appellant,
and should not for that reason be considered or treated as merely a
geographical name. It is undoubtedly true that where such a
secondary signification has been acquired, its use in that sense
will be protected by restraining the use of the word by others in
such a way as to amount to a fraud on the public and on those to
whose employment of it the special meaning has become attached.
In other words, the manufacturer of particular goods in entitled
to the reputation they have acquired, and the public is entitled to
the means of distinguishing between those and other goods, and
protection is accorded against unfair dealing whether there be a
technical trademark or not. The essence of the wrong consists in
the sale of the goods of one manufacturer or vendor for those of
another.
If a plaintiff has the absolute right to the use of a particular
word or words as a trademark, then, if an infringement is shown,
the wrongful or fraudulent intent is presumed, and although allowed
to be rebutted in exemption of damages, the further violation of
the right of property will nevertheless be restrained. But where an
alleged trademark is not in itself a good trademark, yet the use of
the word has come to denote the particular manufacturer or vendor,
relief against unfair competition or perfidious dealing will be
awarded by requiring the use of the word by another to be confined
to its primary sense by such limitations as will prevent
misapprehension on the question of origin. In the latter class of
cases, such circumstances must be made out as will show wrongful
intent in fact or justify that inference from the inevitable
consequences of the act complained of.
Lawrence Manufacturing
Co. v. Tennessee Manufacturing Co., 138
U. S. 549;
Coats v. Merrick Thread Co.,
149 U. S. 562;
Singer Manufacturing Co. v. June Manufacturing Co.,
163 U. S. 169.
In
Singer Manufacturing Company v. June Manufacturing
Company, the Singer machines were covered by patents whereby
there was given to them a distinctive character and form which
caused them to be known as the Singer machines, as differing from
the form and character of machines made by others. The word
"Singer" was adopted by the Singer Company as designative of
their
Page 179 U. S. 675
distinctive style of machines, rather than as solely indicative
of the origin of manufacture. That word constituted the generic
description of the type and class of machines made by that company,
and on the expiration of the patent, the right to make the patented
article and to use the generic name necessarily passed to the
public. But nevertheless, this Court held that those who availed
themselves of this public dedication to make the machines and use
the generic designation did so on condition that the name should be
so used as not to deprive others of their rights or to deceive the
public. MR. JUSTICE WHITE, delivering the opinion, said:
"It is obvious that, if the name dedicated to the public, either
as a consequence of the monopoly or by the voluntary act of the
party, has a two-fold significance, one generic and the other
pointing to the origin of manufacture, and the name is availed of
by another without clearly indicating that the machine upon which
the name is marked is made by him, then the right to use the name
because of its generic signification would imply a power to destroy
any goodwill which belonged to the original maker. It would import
not only this, but also the unrestrained right to deceive and
defraud the public by so using the name as to delude them into
believing that the machine made by one person was made by
another."
In
Reddaway v. Bankam, App.Cas.1896, p. 199, much
relied on by appellant's counsel, Reddaway was a manufacturer of
belting from camel hair, which belting he had called "camel hair
belting" for many years, so that it had become known in the trade
as belting of his manufacture Bankam long after made belting from
the same material which he sold and advertised as Arabian belting,
but subsequently he, or a company he had formed, began to call it
"camel hair belting." Reddaway and Reddaway's company brought an
action for injunction, which was tried before Collins, J. (now Lord
Justice Collins), and a special jury. The jury answered certain
questions to the effect that "camel hair belting" meant belting
made by plaintiffs, as distinguished from belting made by other
manufacturers; that the words did not mean belting of a particular
kind without reference to any particular maker; that the defendants
so
Page 179 U. S. 676
described their belting as to be likely to mislead purchasers
and to lead them to buy defendants' belting as and for plaintiffs'
belting, and that defendants endeavored to pass off their goods as
and for plaintiffs' goods, so as to be likely to deceive
purchasers. On the findings of the jury, Collins, J., entered a
decree for plaintiffs and granted an injunction restraining
defendants
"from continuing to use the words 'camel hair' in such a manner
as to deceive purchasers into the belief that they are purchasing
belting of the plaintiffs' manufacture, and from thereby passing
off their belting as and for the belting of the plaintiffs'
manufacture."
The case having gone to the Court of Appeal, the decree was
reversed and judgment entered for defendants (Q.B.Div. 1895, p.
286), and plaintiffs thereupon prosecuted an appeal to the House of
Lords, which reversed the Court of Appeal and reinstated the
decision of Collins, J., with a slight modification. The case was
held to fall within the principle, as put by the Lord Chancellor,
"that nobody has any right to represent his goods as the goods of
somebody else."
Lord Herschell, referring to
Wotherspoon v. Currie,
L.R. 5 H.L. 508, said:
"The name 'Glenfield' had become associated with the starch
manufactured by the plaintiff, and the defendant, although he
established his manufactory at Glenfield, was restrained from using
that word in connection with his goods in such a way as to deceive.
Where the name of a place precedes the name of an article sold, it
prima facie means that this is its place of production or
manufacture. It is descriptive, as it strikes me, in just the same
sense as 'camel hair' is descriptive of the material of which the
plaintiff's belting is made. Lord Westbury pointed out that the
term 'Glenfield' had acquired in the trade a secondary
signification different from its primary one, that, in connection
with the word starch, it had come to mean starch which was the
manufacture of the plaintiff."
And Lord Herschell further said that he demurred to the view
--
"That the defendants in this case were telling the simple truth
when they sold their belting as camel hair belting. I think the
fallacy lies in overlooking the fact that a word may
Page 179 U. S. 677
acquire in a trade a secondary signification differing from its
primary one, and that, if it is used to persons in the trade who
will understand it, and be known and intended to understand it in
its secondary sense, it will nonetheless be a falsehood that in its
primary sense it may be true."
These and like cases do not sustain the proposition that words
which in their primary signification give notice of a general fact,
and may be used for that purpose by everyone, can lawfully be
withdrawn from common use in that sense, but they illustrate the
adequacy of the protection from imposition and fraud in respect of
a secondary signification afforded by the courts.
In the instance of a lawfully registered trademark, the fact of
its use by another creates a cause of action. In the instance of
the use in bad faith of a sign not in itself susceptible of being a
valid trademark, but so employed as to have acquired a secondary
meaning, the whole matter lies
in pais.
It is to be observed, however, that the question we are
considering is not whether this record makes out a case of false
representation, or perfidious dealing, or unfair competition, but
whether appellant had the exclusive right to use the word "Elgin"
as against all the world. Was it a lawfully registered trademark?
If the absolute right to the word as a trademark belonged to
appellant, then the circuit court had jurisdiction under the
statute to award relief for infringement; but if it were not a
lawfully registered trademark, then the circuit court of appeals
correctly held that jurisdiction could not be maintained.
And since, while the secondary signification attributed to its
use of the word might entitled appellant to relief, the fact that,
primarily, it simply described the place of manufacture, and that
appellees had the right to use it in that sense, though not the
right to use it without explanation or qualification if such use
would be an instrument of fraud, we are of opinion that the general
rule applied, and that this geographical name could not be employed
as a trademark and its exclusive use vested in appellant, and that
it was not properly entitled to be registered as such.
In view of this conclusion, and of the fact that the
question
Page 179 U. S. 678
of the constitutionality of the act of Congress was not passed
on by the court below, we have refrained from any discussion of
that subject.
The circuit court of appeals was right, and its decree is
Affirmed.
