§ 68. Geographical names-The underlying principle.— Judge Lacombe has recently given this concise expression of the rule applied by courts of equity to geographical names falsely used in unfair competition: "Whatever may be the decisions in the state courts, it is abundantly settled by authority in the federal courts that they will not tolerate a false use of a geographical name when it is so used as to promote unfair competition and to induce the sale of spurious goods." 71 In a later case, the rule has been illustrated and applied as follows: "The respondents concede that they put up in cans pears grown in Maryland and adjoining states, and keep the cans without labels until they are sold, and then, at the desire of their customers, they label them as California pears, canned by some pretended packer at some place in California. This is a clear case of fraudulent competition by the use of a geographical name which the complainants are entitled to use, but the respondents are not. It is true that no one single packer can acquire an exclusive right to use as a private trademark, 'California Pears,' or 'California,' as a label on canned pears; but all the persons who put up California grown pears in California have a right to use it; and it has acquired, the bill alleges, an especial trade significance of value. With regard to articles of food, and particularly with regard to fruits, the place where they are grown creates often an essential distinction as to quality and flavor; and this distinction, when it has become known in trade by the geographical name of the place where grown, the growers of the fruit are entitled to the benefit of, and the consumers should not be deceived. The present is such a case, and presents, I think, indisputable ground for application of the equitable jurisdiction which prevents unfair and fraudulent competition by simulated trade designations."' 72

71-Collinsplatt v. Finlayson, 88 Fed. Rep. 693. To the same effect see Jewish Colonization Ass'n v. Solomon (2), 154 Fed. Rep. 157; International Cheese Co. v. Phenix Cheese Co., 103 N. Y. Supp. 362. 72-Morrow, J., in California Fruit Canners' Ass'n v. Myer, 104 Fed. Rep. 82, citing Pillsbury-Washburn Co. v. Eagle, 30 C. C. A. 386; 86 Fed. Rep. 608-618. The leading English case is the Stone Ales Case, Thompson v. Montgomery (1891),

App. Cas. 217; 8 R. P. C. 365. Of this decision a very learned English law writer has said: "There are dicta in the Stone Ales Case, in the House of Lords, which suggest that a practical monopoly might be acquired of the use of the name of a place where goods are manufactured; but they must, it is submitted, be read by reference to the facts of the case, which was one of deliberate fraud." Kerly on Trademarks (London, 1894), p. 44.

The Supreme Court of the United States has clearly excluded geographical names from use as technical trademarks.

It was said by Mr. Justice Jackson: "The general principles of law applicable to trademarks, and the conditions under which a party may establish an exclusive right to the use of a name or symbol, are well settled by the decisions of this court, which establish the following general

propositions:

(3) That the exclusive right to the

use of the mark or device claimed as a trademark is founded on priority of appropriation; that is to say, the claimant of the trademark must have been the first to use or employ the same on like articles of production. (4) (4) Such trademarks can not consist of words in common use as designating locality, section, or region of country.'

The reasons for this rule have been more fully expressed by Mr. Justice Strong, in these words: "No one can claim protection for the exclusive use of a trademark or tradename, which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected; for competition would be destroyed. Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trademark, and the exclusive use of it be entitled to a legal protection. * He has no right to appropriate a sign, or a symbol, which, from the nature of the fact it is used to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose. And it is obvious that the same reasons which forbid the exclusive appropriation of generic names, or of those merely descriptive of the article manufactured, and which can be employed with truth by other manufacturers, apply with equal force to the appropriation of geographical names designating districts of country. Their nature. is such that they can not point to the origin (personal origin) of the articles of trade to which they may be applied. It must be considered as sound doctrine than no one can apply the name of a district of country to a well-known article of commerce, and obtain thereby such an exclusive right to the

*

73-Columbia Mill Co. v. Alcorn, 150 U, S. 460; 37 L. Ed. 1144

application as to prevent others inhabiting the district, or dealing in similar articles coming from the district, from truthfully using the same designation.

74

Is it not a reasonable conclusion from these and the kindred cases which we have heretofore examined, that there can be no technical trademark in a geographical name? To the author's mind that conclusion is inevitable, and there is but one class of geographical names which are to be excepted from the operation of the rule, namely, those applied to a natural product and its sole place of production. The name so used may very properly be a trademark, indicative of the origin and ownership of the natural product, and at the same time indicating the locality of its production. Here the name undoubtedly is a trademark if there is but one owner of the entire locality, and the courts have uniformly so held.75 The same scientific objection to geographical names as trademarks obtains as in the case of proper names. They are generic, in that every manufacturer who sees fit to locate in that city or vicinage and inaugurate a competing business has an equal right with all those who have preceded him in the locality, and all those who may thereafter so locate, in using the name of that locality in advertising his wares and in preparing them for commerce.76

Being generic they can not be used as trademarks, with the one exception we have noted, that of the title to the entire locality being vested in one owner. In that case no one else can locate there and institute competition; the name of the locality is not generic, and that fact exempts it from the operation of the rule.

In the course of a well-considered opinion Judge Showalter has held the name "Elgin' as applied to watch-movements

74-Delaware & Hudson Canal Co. v. Clark, 13 Wall. 323; 20 L. Ed. 581.

75-City of Carlsbad v. Schultz, 78 Fed. Rep. 469; City of Carlsbad v. Kutnow, 71 Fed. Rep. 167; affirming 67 Fed. Rep. 794; Hill v. Lockwood, 32 Fed. Rep. 389; Northcutt v. Turney, 101 Ky. 314; 1 S. W. Rep. 21.

76-Blackwell V. Dibrell, Fed. Case No. 1475, 3 Hughes, 160; Newman v. Alvord, 49 Barb. 588; 35 How. Pr. 108; Cox, 404; Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311; 20 L. Ed. 581; New York Cement Co. v. Coplay Cement Co., 45 Fed. Rep. 212.

to be a strictly technical trademark, even though the name is that of the town where the factory is situated, because, in the words of the court: "This mark has this significance (designating complainant's manufacture) where the town of Elgin is entirely unknown." But this is purely a dictum, and presented in a case of fraudulent competition, where the defendants had moved their factory from Chicago to Elgin "with the purpose of giving some color of right to a de

signed trespass on complainant's goodwill." 77

In applying the doctrine of geographical names to trademarks, there is frequently occasion to exercise common sense. "A word does not become a geographical name simply because some place upon the earth's surface has been called by it. For example, we agree with Mr. Justice Kekewich that the word 'Monkey' is not proved to be a geographical name, by showing merely that a small and by no means generally-known island has been called by that name. If, indeed, in its primary and obvious meaning, the word has reference to a locality, as the word 'Melrose' in Van Duzer's case, or the word 'Eboli' in Sir Titus Salt and Company's case (from which Mr. Justice Chitty declined to distinguish the derivative 'Eboline') it may well be a geographical name." 78

§ 69. A false geographical name vitiates trademark.-To all that has been said in the last preceding section must be noted one broad qualification. He who seeks to uphold a trademark in a court of equity must do so with clean hands, so that a trademark otherwise good will be vitiated and the right to it destroyed by the use of a false geographical name in connection with it.79 And this is true, as expressed by Judge Showalter, even though "No actual or substantial wrong may have resulted to any one from this misrepresentation." so

77-Elgin Nat. Watch Co. v. Illinois Watch Co. (1), 89 Fed. Rep. 487; reversed on jurisdictional grounds, Illinois Watch Co. v. Elgin Nat. Watch. Co., 94 Fed. Rep. 667; 35 C. C. A. 237; the latter decision affirmed in Elgin Nat. Watch Co. v. Illinois Watch Co. (2), 179 U. S. 665; 45 L. Ed. 365.

78-Rigby, L. J., In re Magnolia Metal Company's Trademarks, 14 R. P. C. 621, 627.

79-Manhattan Med. Co. v. Wood, 108 U. S. 218; 27 L. Ed. 706; and cases cited ante, § 40.

80--Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376-382 To same effect, see American Cereal

This rule, however, has its practical limitations. Like other forms of misrepresentation, it may be that the use of a geographical name, by one not residing or manufacturing within the locality named, amounts to a mere collateral misrepresentation. Thus, the fact that one of the mills of manufacturers who are joined in an action to restrain the fraudulent use of the name of the city in which they are situated, is situated outside the limits of the city, is not a bar to equitable relief, when the mill is practically a portion of a plant, the remainder of which is within the city.81

84

There is a class of words usually treated as "geographical names fancifully used" that have been treated as trademarks. So of "Alderney" oleomargarine,82 "Vienna" bread.83 "German" sweet chocolate ("German" being the name of an individual). But in their last analysis, the "fanciful use" ascribed to those words by the courts is simply a convenient excuse for avoiding the harsh doctrine of Manhattan Medicine Co. v. Wood. The misrepresentation may be implied from the language employed though not in express words, 85

§ 70. The right to complain of unfair use of geographical name. The right to use the name of a locality in the manufacture and sale of goods is a general right of all who manufacture in that locality.86 It therefore follows that where any one not living in that locality uses its name to indicate his merchandise, he is resorting to a trick to divert business from the dealers in the same kind of merchandise who in fact live in the locality and honestly use its name as a mark upon their goods.87