Canal Company v. Clark
APPEAL from the Circuit Court for the Southern District of New York; the case, which arose on a bill to enjoin the use of an alleged trade-mark, being thus:
In the northeastern section of Pennsylvania there exists a place or region to which from early times the name of Lorckaworna, or Lackawanna, seems, on the few occasions when the place is mentioned, to have been given. As early as 1793, the diary of William Colbert, a pioneer preacher of the Methodists, makes record of his meeting a person who lived at 'Lackawanna,' and of his crossing a mountain and getting there himself. A deed, dated in 1774, speaks of a river running through that valley or region as 'the Lackaworna,' and another deed dated in 1796 conveyed 'lands lying and being in Upper Settlement, so-called, and abutting on each side of the Lackawanna.' The region, however, in those early times was uncultivated and little known to people generally in any way, and the name was unheard of and unnoted except by those who were dwelling in the very district.
The discovery and use of coal in Pennsylvania, soon after the year 1820, wrought an immense change in the whole northeastern part of the State. It brought this valley and others, as, for example, the Wyoming, Lehigh, and Schuylkill, into very prominent position and interest; and the 'Lackawanna Valley' soon became a well-known and sufficiently defined region; one of large dimensions, extending along what had become known as the Lackawanna River to its junction with the Susquehanna.  In 1825 the Delaware and Hudson Canal Company purchased coal lands in this region, and in order to mine and bring the coal there to market, constructed at great expense a canal from Rondout, on the Hudson, to Honesdale, in Pennsylvania, a distance of one hundred and eight miles, and a railroad thence to their coal mines, which they had since maintained, for the purpose of bringing their coal to market. This transport they began to make in 1828, and had ever since been engaged in taking out coal and in carrying it to the Hudson River and to the markets of the country; gradually increasing their annual productions. In the first year they produced 720 tons, in the second year 43,000 tons, and in 1866 1,300,000 tons.
The coal coming from the Lackawanna Valley, and it being impossible for ordinary persons by mere inspection to distinguish it from that mined elsewhere, it naturally got, or artificially had given to it, at the commencement of the company's business, the name 'Lackawanna coal;' and by this name it had been generally afterwards known and called in the market.
Although this coal came from a section of country called both by geologists and the public the Lackawanna region, still the company were, without doubt, the first and for more than twenty years the only producers of coal from that region, and during all this time their coal had become favorably known in market by the name already mentioned.
In 1850, another company, the Pennsylvania Coal Company, began to mine coal from their mines situated in the same general region of country, and for the first two years the coal which they mined was partially prepared and brought to market by the Delaware and Hudson Canal Company, already named as the original operators, and sold under contract in common with their own; but, about 1852, when the Pennsylvania company began itself to bring its coal to market and to sell it, it got or had given to it the name of 'Pittston coal,' by which it was frequently or generally known and called, especially when specifically spoken of.
Afterwards, about 1856, a third company-the Delaware, Lackawanna, and Western Railroad Company-began to mine coal from mines which they owned, situated in other parts of the same section of country, and to distinguish it from that of other producers, their coal got or had given to it the name of 'Scranton coal,' by which it had since been frequently or generally known and called, especially when meant to be particularly referred to.
Coals from other parts of the same region got or had given to them distinctive names; such as Lehigh coal, Hazelton coal, Spring Mountain coal, Sugarloaf coal, &c., and in like manner coals from the Schuylkill region acquired or had given to them distinctive names by which the same were known more particularly in the market.
With all this, however, all the varieties coming, as in effect they did, from the same great veins or strata, were not unfrequently of later times spoken of by the trade, when speaking generally, as being Lackawanna coal; and under the general heading of statistics relating to coal would be spoken of in like generic terms.
The original Lackawanna was asserted by those interested in its sale to be better prepared than either of the others. From this circumstance or from some other it was esteemed and commanded, with a class of purchasers, a higher price than either the Scranton or Pittston.
The canal company had a market for their Lackawanna coal in the City and State of New York, and also in the cities and towns of the Eastern States, and, amongst others, at Providence, R. I., where they had for many years sold annually large quantities by the name of 'Lackawanna coal,' by which it had been favorably known.
In this state of things, one Clark, a dealer in coals, at Providence, advertised in the newspapers published in that city and otherwise, that he kept on hand, for sale cheap, large quantities of 'Lackawanna coal,' and in this way, and by that name had sold many tons of the Pittston and Scranton coals annually. It was admitted that he did not have any of the canal company's coal that is to say, the original Lackawanna-for sale.
Hereupon the Delaware and Hudson Canal Company filed their bill against Clark, to enjoin his calling the coal which he sold 'Lackawanna coal.' The bill averred that about the time the canal company commenced their operations, they sought out, devised, and adopted the name 'Lackawanna coal' as a special, particular, and distinctive name or trade-mark, by which their coal might be introduced to dealers as the product of their mines in distinction from the coal of other producers, and that prior to their adoption of the word Lackawanna it had never been adopted or used in combination with the word 'coal' as a name or trade-mark for any kind of coal. Their bill also averred that ever since their adoption of the name their coal has been called and known in the market as 'Lackawanna coal,' and by no other name.
The defendant, it was admitted, had none of the complainant's 'Lackawanna coal' for sale, but dealt in coals from another part of the Valley; sorts which when specifically distinguished, as they constantly were, were distinguished by the name of 'Scranton coal,' and 'Pittston coal;' coals having the same general appearance as the complainant's 'Lackawanna coal,' and which the bill alleged could not be easily distinguished therefrom by inspection.
The answer denied that the name 'Lackawanna coal' was, or ever had been, the peculiar property and trade-mark of the complainants, or of benefit to them as establishing the identity of the coal. It admitted that the defendant kept coal for sale, and that he did not purchase or keep for sale any of the company's Lackawanna coal, and that he dealt almost exclusively in coal mentioned in the bill as Scranton and Pittston coal, and that the two varieties were of the same general appearance as the coal of the complainants. It denied, however, that those varieties of coal were known by the names just mentioned, exclusively, or were of a less good quality than the coal of the complainants, and averred the contrary; affirming that they were equally Lackawanna coal, and known by that name, as the evidence tended to show that generically they were.
The court below dismissed the bill, and from that decree the Delaware and Hudson Canal Company appealed. The leading question presented by the appeal being whether the complainants had an exclusive right to the use of the words 'Lackawanna coal,' as a distinctive name or trade-mark for the coal mined by them, and transported over their railroad and canal to market; there being also some other points not necessary to be here stated.
The case was fully and remarkable well argued on both sides, and with a nice analysis of authorities.
Messrs. E. H. Owen and S. P. Nash, for the plaintiffs in error:
It cannot be doubted as a fact that the defendant advertises his coal as 'Lackawanna coal,' for the purpose of inducing the public to believe that it is in fact the coal produced and sold by the canal company, and with the intention of supplanting the company in the good will of its trade. This is a fraud upon the public, and a fraud also upon the company suing; depriving them of the benefit of any right they have in the word Lackawanna, as a trade-mark.
Now, the canal company has a valid title to the use of the word Lackawanna as a trade-mark. They were the first to adopt and impose upon it the office of becoming and being thereafter the name for their coal; so adopting and appropriating it as early as 1828, at the commencement of their business. The first coal which they brought to market was called and sold by the name of Lackawanna coal, and all the coal which they have hitherto brought to market has been sold and dealt in by that name and by none other. By such original appropriation of the word 'Lackawanna,' they acquired a title thereto, and the right to its exclusive use in combination with the word 'coal,' and thereupon and thereafter, by the continued use thereof, the new compound word 'Lackawanna coal' became, and was, and is, the name and trade-mark for their coal, not limited by territorial bounds. 
It is not necessary that a word which may be adopted as a name and trade-mark should be a new creation never before known or used, to entitle it to be so adopted. Any word in common use may be taken, if its application be original, and so far peculiar as to be capable, when known to the public, of distinguishing the property of the party so adopting it, and to which it may be attached, from that of other parties. In such case the right of the public to use the word is not abridged. It can be used as originally and in any and every other way imaginable, except in its peculiar combination with the word 'coal.'
The exceptions to the right to appropriate a word for a trade-mark are, that it cannot be done when the word adopted is merely used as descriptive of quality, as in the case of Stokes v. Landgraff,  or of Corwin v. Daly,  or of Amoskeag Manufacturing Company v. Spear;  or where it is the proper name for the article, as in the case of the 'Schnapps,' the subject of controversy in Wolfe v. Goulard;  or where it has by general use become the appropriate name of an article, which all persons manufacturing the same may use, as in the case of 'Dr. Johnson's Yellow Ointment,'  or that of 'The Essence Of Anchovies.' 
The word Lackawanna, as used by the company, does not come within these exceptions. It is not the naturally appropriate name for coal. In its original sense it did not mean coal, nor had it become by previous use the name of coal, nor does it imply, nor was it intended to indicate the quality of coal, but it was adopted for and became, and was, and still is, the specific name thereof, indicating its origin and ownership, and by which it could be bought and sold in market.
The defendant does not pretend that he originated the name, or that any other company or person adopted or used it as a specific name for coal prior to the time when the canal company adopted it. Nor has he any color of right to sell his coal by the name of 'Lackawanna coal,' from the mere fact that it comes from what is commonly known as the Lackawanna region; more especially since it does not come from the company's mines, nor through them as producers, and is not, in fact, the coal known in market as Lackawanna coal. That the different varieties, Pittston, Scranton, and Lackawanna, may be occasionally grouped together in loose parlance, or in the ultimate head of a statistical exhibit, under the general name of Lackawanna coal, proves nothing. Different varieties of Lehigh and Schuylkill coal are grouped under those two general names. So different varieties of German wines are, and called Rhine wines, but this would give no right to any one to use the peculiar and specific name of one kind of coal or wine as and for the name of another produced by a different person.
Various authorities support our view. To three as particularly doing so we refer the court.
The first is Newman v. Alvord.  There the plaintiffs manufactured water-line from beds near Akron, Erie County, New York, which they called 'Akron Cement, Akron Water-lime,' and the defendant manufactured a similar article from his beds near Syracuse, Onondaga County, and called his 'Onondage Akron Cement and Water-lime,' and it was held that the word Akron, as used by the plaintiffs, was their trade-mark, and that they were entitled to be protected by injunction in its use.
The next case is McAndrews v. Bassett.  There it appeared that the plaintiff had first adopted and used the word 'Anatolia,' as a name for his liquorice, and the defendant insisted upon his right to use that word also as the name of his liquorice, because it was the name of a country, the use of which, as he alleged, was common to all, the therefore the plaintiff had no exclusive right to its use; but the court pronounced the argument a 'fallacy,' and stated that although property in a word cannot exist for all purposes, yet it will exist when applied by way of stamp upon a stick of liquorice, the moment the article thus stamped goes into market. In the case at bar, although the coal cannot be stamped, yet the moment it is produced in market the name Lackawanna becomes united to it as fully as if it had been stamped thereon. There is no difference in principle between the two cases.
The third case is Seixo v. Provezende,  where it appeared that the plaintiff, Baron de Seixo, was the proprietor of an estate called the Quinta de Seixo, which was celebrated for the port wine produced from it, and which be consigned to London for sale, placing upon the heads of the casks various marks, and at the bung a crown with the word, 'Seixo,' and so his wine became known as 'Crown Seixo.' The defendant being the lessee of an adjoining estate known, also, as the Quinta de Seixo, sent his wine to London with certain marks on the head of the casks, and at the bung thereof a crown and the words, 'Seixo de Cima' (Upper Seixo), and he claimed the right so to use the name Seixo, on the ground that he was owner or lessee of a vineyard adjoining the plaintiff's, also of several small vineyards on the opposite side of the river, parts of which were known by the name of 'Seixo,' meaning stony or pebbly. The court held, that even conceding that, it did not justify the defendant in adopting a device or brand, the probable effect of which was to lead the public to suppose when purchasing his wine, that they were purchasing the wine produced from the plaintiff's vineyard.
Our whole case is summed up in Lord Langdale's language in Croft v. Day.  His lordship there says:
'No man has a right to sell his own goods as the goods of another. You may express the same principle in different form, and say that no man has a right to dress himself in colors, or adopt and bear symbols to which he has no peculiar or exclusive right, and thereby personate another person for the purpose of inducing the public to suppose either that he is that other person, or that he is connected with, or selling the manufacture of such other person, while he is really selling his own. It is perfectly manifest that to do these things is to commit a fraud, and a very gross fraud.'
But to establish the defendant's fraud and deceit, it is not even necessary to show that he sells his coal as and for that of the appellants. It is sufficient that he intentionally sells it by the name which he knows the appellants had previously adopted as the name of their coal.
Mr. H. E. Knox, contra, with a brief of Messrs. Fullerton, Knox, and Rudd, relied on the following general propositions of law established by principle or by authorities, which he cited.
1. That to constitute a trade-mark in a name, the name must be either (1) an invented one, or (2) one which identifies the maker with the article by indicating the person by whom made, or the place at which made, in other words, the name must be either a merely fancy name or a name indicating ownership or origin.
2. That a person has no right to appropriate a name which others may apply with equal truth, and have an equal right to employ for the same purpose, such as a geographical name, as in this case.
3. That the basis of the action of a court of equity to restrain the infringement of the right to a trade-mark is fraud or imposition on the part of the defendant, fraud as against the plaintiff, or imposition on the public.
4. That the name must be used distinctively and exclusively in order to gave a title to it.
Mr. Justice STRONG delivered the opinion of the court.
^1 The name, Lackawanna, it is said, is a corruption of the Indian words Laha-whanna; the two words signifying the meeting of two streams. See Hollister's History of the Lackawanna Valley, published by W. H. Tinson, New York, 1857, p. 10.
^2 Derringer v. Plate, 29 California, 292.
^3 17 Barbour, 608.
^4 7 Bosworth, 222.
^5 2 Sanford's Supreme Court, 599.
^6 18 Howard's Practice, 64.
^7 Singleton v. Bolton, 3 Douglas, 293.
^8 Burgess v. Burgess, 17 English Law and Equity, 257.
^9 49 Barbour, 588.
^10 10 Jurist, new series, 550.
^11 Law Reports, 1 Chancery Appeals, 192.
^12 7 Beavan, 84.