CHAPTER II. THE ACQUISITION OF A TRADEMARK. § 28. Who may acquire.-Generally speaking any person capable of holding title to personal property may acquire the right to a trademark. In practice, by far the greater portion of all trademarks are held by manufacturers. There are, however, many persons, not manufacturers, who use trademarks as a means of identifying the subject-matter of their commerce. First among these, in their natural order, are those who apply geographical names as trademarks, to the natural products of the earth. This may be done, of course, only by the owner of its sole place of production,2 as, if the product were accessible to others, there could be no exclusive right to the trademark, except to identify the person who handled the product on its way to the consumer. This leads us to the second, and larger, class of those who can acquire trademark rights, though they are not manufacturers. Many mercantile houses who merely select merchandise, use trademarks upon the goods they so select,3 and these are valid, because, in the language of Mr. Chief Justice Fuller, the marks so used are equivalent to a certificate that the goods so marked are the genuine article which has been 1-"A corporation is entitled to have its trademark as well as a private individual, and may sue for its infringement." Fenner, J., in Insurance Oil Tank Co. v. Scott, 33 La. Ann. 946. 2-Congress & Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291-302; 10 Abb. Pr. N. S. 348; 6 Am. Rep. 82; 57 Barb. 526; Cox, 599; Dunbar v. Glenn, 42 Wis. 118; Seb. 529; Wheeler v. Johnston, 3 L. R. Ir. 284; Apollinaris Co. v. Norrish, 33 L. T. N. S. 242; Radde v. Norman, L. R. 14 Eq. 348; Braham v. Beachim, 7 Ch. D. 848; 47 L. J. Ch. 348; 38 L. T. N. S. 640; 26 W. R. 654; Seb. 589; Hill v. Lockwood, 32 Fed. Rep. 389; City of Carlsbad v. Schultz, 78 Fed. Rep. 469; City of Carlsbad v. Kutnow, 71 Fed. Rep. 167, 18 C. C. A. 24; affirming 68 Fed. Rep. 794; Northcutt v. Turney, 101 Ky. 314; 41 S. W. Rep. 21. To the same effect see Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217. 3-Dewitt v. Mathey, 18 Ky. L. Rep. 257, 35 S. W. Rep. 1113. determined by the selectors to possess a certain degree of excellence, evidencing that the skill, knowledge and judgment of the selectors have been exercised in ascertaining that the particular goods so marked are possessed of a merit rendered definite by their examination and of a uniformity rendered certain by their selection. Slightly analogous to this class of cases are those where the members of a trades union adopt a label to be used by the workmen who compose the union, upon the goods manufactured by them. In a number of cases their right to the protection of this label, as a trademark, has been denied, while in others the right is affirmed. 4-Menendez v. Holt, 128 J. S. 514-520; 32 L. Ed. 526; Levy v. Waitt (1), 56 Fed. Rep. 1016; Levy v. Waitt (2), 61 Fed. Rep. 1008, 10 C. C. A. 227; Hirsch v. Jonas, L. R. 3 Ch. D. 584, 586; In re Australian Wine Importers (Ltd.), 41 Ch. D. 278-281; Thompson & Co. v. Robertson, Ct. Sess. Cas. (4th ser.) XV, 880; 25 Scot. L. Rep. 649; Yale Cigar Mfg. Co. v. Yale, 30 Off. Gaz. 1183; Wood v. Lambert, L. R. 32 Ch. D. 247. 5-Ex parte Cigar Makers' Ass'n, 16 Off. Gaz. 958; Schneider v. Williams, 44 N. J. Eq. 391; Cigar Makers' Union V. Conhaim, 40 Minn. 726 (the last case by a divided court, three denying the right of trademark and two affirming it); McVey v. Brendel, 144 Pa. St. 235; Cox, Manual, Case No. 730; Weener v. Brayton, 152 Mass. 101, 25 N. E. Rep. 46, 8 L. R. A. 640; Cox, Manual, Case No. 712; State V. Berlinsheimer, 62 Mo. App. 165. 6-Allen v. McCarthy, 37 Minn. 349; affirming the decision of the lower court by an equally divided bench; Bloete v. Simon, 19 Abb. N. C. 88; People v. Fisher, 57 N. Y. Sup. Ct. 552; Cigar Makers' Pro tective Union v. Lindner, 3 Ohio St. Dec. 244; Strasser v. Moonelis, 108 N. Y. 611; Tracy v. Banker, 170 Mass. 266; Beebe v. Tolerton & Stetson Co., 117 Iowa 593, 91 N. W. Rep. 905; Bulena v. Newman, 31 N. Y. Supp. 449; Cigarmakers' International Union of America v. Goldberg, 57 Atl. Rep. 141; Cohn v. People, 149 Ill. 486; 37 N. E. Rep. 60; State v. Hagen, 6 Ind. App. 167, 33 N. E. Rep. 233; Hetterman v. Powers, 102 Ky. 133, 43 S. W. Rep. 180. In Carson v. Ury, Judge Thayer remarks: "It is no doubt true that the union label does not answer to the definition ordinarily given to a technical trademark, because it does not indicate with any degree of certainty by what particular person or firm the cigars to which it may be affixed were manufactured, or serve to distinguish the goods of one cigar manufacturer from the goods of another manufacturer, and because the complainant appears to have no vendible interest in the label, but merely a right to use it on cigars of his own make, so long and only so long as he remains a member of the union. In each of these respects the label lacks the charac The cases relating to the infringement of union labels must be read in the light of the rule that "neither at common law nor by the general principles of equity was a man entitled, at least in the absence of actual fraud, to protection in the exclusive use of a label for goods, unless it were one which he was using to distinguish some visible commodity owned or traded in by him. This was equally true of an association of men." (The statutes for the protection of union labels are) "designed to create both a new right of action and a new cause of action." T * Importers or exporters may have trademarks to identify the goods passing through their hands, and it has been held that a bleacher who finishes goods manufactured by another has a right to a trademark applied to goods so treated by him.10 § 29. User. There can be no right in a trademark until it has been used. Under the English act 11 an application for teristics of a valid trademark." In the case at bar, the complainant being a manufacturer of cigars, he was granted equitable relief on the ground of unfair competition. Carson v. Ury, 39 Fed. Rep. 777, 5 L. R. A. 614; Cox, Manual, Case No. 709. As to criminal prosecution for infringement of union label see State v. Bishop, 128 Mo. 373. As to the sufficiency of proof in such a prosecution under the Massachusetts statute of 1895 (C. 462, 84), see Commonwealth v. Rozen, 176 Mass. 129; 57 N. E. Rep. 223. That the right to use a union label may be conferred by a union upon an affiliated trades council, and both properly joined as plaintiff's in an action to enjoin the unauthorized use of the label, see Lynch v. John Single Paper Co., 101 N. Y. Supp. 824. 7-Baldwin, J., in Lawlor Charles H. Merritt & Son, 78 Conn. 630, 63 Atl. Rep. 639. In the sub V. sequent history of this case a judgment for the defendants was affirmed upon the ground that § 4907, Connecticut Gen. Stats. of 1902, had not been complied with in that the label did not announce that plaintiff's hats were made by members of the union, but rather that they were made or sold by the union itself. Lawlor v. Merritt, 79 Conn. 399, 65 Atl. Rep. 295. 8-Godillot v. Hazard, 44 N. Y. Super. Ct. 427. 9-Robinson v. Finlay, L. R. 9 Ch. D. 487. 10-In re Sykes, 43 L. T. N. S. 626. 11-Sec. 75, Patents, Designs and Trademark Act, 1883, amended 1888, 51 and 52 Vict., c. 50; In re Hudson's Trademark, 3 R. P. C. 155; 32 Ch. D. 311; 55 L. J. Ch. 531; 55 L. T. 228; 32 W. R. 616; Cartmell, 168; Edwards v. Dennis, 30 Ch. D. 454. registration of a trademark is deemed to be equivalent to public use of the trademark. But even this is merely to supply a constructive instead of the actual user required at common law,12 and the general rule is not affected by that statute.13 The exclusive right to the use of a trademark is acquired only by priority of appropriation. The claimant of a trademark must have been the first to use or employ the same on like articles of production.14 A single instance of user, with accompanying circumstances evidencing an intent to continue that use,15 is sufficient to establish the right to a trademark; there is no requirement that the use shall continue for any prescribed or definite length of time.16 It is immaterial that the first use of the mark was accidental, for a trademark, in the language of the United States Supreme Court, "is often the result of accident rather than design." 17 On the other hand, the use of a mark may be "so transitory, spasmodic, and inconsiderable," as not to vest title in 12-Under the act of 1870 it was held that registration was equivalent to public use of a trademark. In re Dutcher Temple Co., Comr. Dec. 1871, p. 248. See §§ 7 and 11 of the act of 1881; Wm. Rogers Mfg. Co. v. Rogers & S. Mfg. Co., 11 Fed. Rep. 495. 13-Singer Manufacturing Co. v. Wilson, 2 Ch. D. 434-440; Lowell Mfg. Co. v. Larned, Cox, Manual, No. 428. 14--J. R. Watkins Med. Co. v. Sands, 83 Minn. 326, 86 N. W. Rep. 340. 15-Columbia Mill Co. v. Alcorn, 150 U. S. 460; 37 L. Ed. 1144; Tetlow v. Tappan, 85 Fed. Rep. 774; Hyman v. Solis Cigar Co., 4 Colo. App. 475; American Washboard Co. v. Saginaw Mfg. Co., 43 C. C. A. 233; 103 Fed. Rep. 281; Welsbach Light Co. v. Adam, 107 Fed. Rep. 463. Citing this work, a claim of trademark has been sustained, based upon the application of the mark to two motor cars at the time the claimant contracted with the manufacturer to make cars under the mark. Ritz Cycle Car Co. v. Driggs-Seabury Ordinance Corp., 237 Fed. Rep. 125, 128. 16-Shaver v. Shaver, 54 Iowa, 208; 37 Am. Rep. 194; Hall v. Barrows, 32 L. J. Ch. 548; Seb. 215. The length of time required to establish the right of trademark."The interference of a court of equity can not depend on the length of time the manufacturer has used the trademark." Romilly, M. R., in Hall v. Barrows, 32 L. J. Ch. 548. The right exists "the moment the article goes into the market So stamped." Westbury, L. C., in McAndrew v. Bassett, 4 DeG. J. & S. 380-386. The right dates from the time when the actual occupation of the market with goods bearing the mark began. Levy v. Waitt, 61 Fed. Rep. 1008-1011; 10 C. C. A. 227; compare W. A. Gaines & Co. v. Rock Spring Dist. Co., 226 Fed. Rep. 531, 538 (C. C. A. 6), and Hanover Star Mill Co. v. Metcalf, 240 U. S. 403; 60 L. Ed. 17-Mr. Justice Miller, in Trademark Cases, 100 U. S. 82; 25 L. Ed. 550. its user as against one whose use has been "long-continued, notorious, and universally recognized." 18 § 30. Affixing the mark.-As stated in our definition, the mark must be affixed to the subject it serves to identify. "It may be either affixed to, or impressed upon, the goods themselves by means of a stamp or an adhesive label, or it may be made to accompany the goods by being impressed or made to adhere to an envelope or case containing the goods."' 19 It has been held in England that a trademark may be watermarked,20 and a measuring stick with an octagonal head, used as a core for rolls of carpet, has been held to be of itself a valid trademark.21 The question of the mode of affixing is purely practical, and one package, parcel or bottle of merchandise may bear a number of trademarks. A very large percentage of the liquors imported into the United States from Europe bear not only the trademark of the producer, but also that of the bottler; and in many cases another trademark, that of the capsule manufacturer, is to be found impressed in the metallic capsule. In like manner a complicated machine may bear many trademarks, indicating the manufacturers of the wheels, axles, oil-cups, bearings, etc., and the machine as a whole bear the comprehensive trademark of the maker who has selected these several parts and assembled them. A trademark can not be acquired by merely using the mark in advertising.22 § 31. Registration not a means of acquiring. With the solitary exception of the California case of Whittier v. Dietz,23 it has nowhere been held in the United States that the right 18-Heublein v. Adams, 125 Fed. Rep. 782, 785. And see ante, sec. 14. 19-Sir G. Jessel, M. R., in Singer Mfg. Co. v. Wilson, 2 Ch. D. 434. 20-Alexander Pirie & Sons v. Goodall, L. R. (1891) 1 Ch. D. 35-41; holding a watermark to be a "brand" within the meaning of sec. 64, subsec. 2 (c) of the Patents, Designs and Trademarks Act, 1883. 21-Lowell Mfg. Co. v. Larned, Cox, Manual, No. 428; Fed. Case No. 8570. 22-Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 Ill. 494, 30 N. E. Rep. 339. St. Louis Piano Mfg. Co. v. Merkel, 1 Mo. App. 305. 23-66 Cal. 78. This decision led to the enactment of the present section 3199 of the Political Code of California (March 12, 1885), providing that "An person |