HUGHES, District Judge.
It is useless to review all the points relied upon by counsel on each side in their able arguments in the cause. I shall consider only those questions upon which, in my judgment, the case really turns.
I shall first deal with the objection of es-toppel, or res judicata, urged by each party against the other.
In order for one suit to constitute an es-toppel upon any party to another suit, four conditions must coexist, viz.: 1st. There must be an identity of the cause, of action. 2d. There must be an identity of parties to the suit. 3d. There must be an identity in the character or quality of the respective parties; and 4th. There must be an identity of the thing in question. See Smith v. Turner [Case No. 13,119].
These conditions of identity do not exist between the present case and either of the cases of Blackwell v. Wright or Blackwell v. Armistead. Those cases, therefore, do not operate as estoppels. Nor do they at all affect the one now under consideration, except so far as they are precedents of authority upon the principles which were decided by them. In Blackwell v. Wright the decision was upon demurrer to the complaint; and, in technical effect, it was only that Blackwell had not traced his title to his trademark by proper allegations from Green; while, on the merits, the decision went only so far as to determine that the allegations of the complaint did not make a case of exclusive right to the trademark for the plaintiff. The complaint there did not charge that AVright’s use of the trademark was a fraud upon the public, or pray for an injunction on that ground. None of these allegations can be made of the complainants’ bill in this ease.
In Blackwell v. Armistead it is true that the decision was upon the principal questions raised in the present case; but owing to the character of the pleadings it was based upon grounds narrower and more technical than those upon which I propose to found the present decision. That suit was a trademark case. This is more, and involves the question of the fraudulent use of a trademark, to the injury of the public at large, as well as of the complainants. Therefore, neither of the two cases which have been urged in estoppel governs even as precedents the present one, which I shall now proceed to consider.
Two questions arise as to the pleadings and evidence:
1st. The first is, whether the defendants have any right at all to use a label in which the word Durham is used as descriptive of smoking tobacco, and in which the figure of a short-horn bull is used as a symbol of the word Durham; their right to the exclusive use of it not being claimed.
2d. The second question is, whether the complainants have a right to the exclusive use of such a label.
In considering the first question, I shall, for the sake of brevity, speak of the defend[553]*553ants’ right to use the label described as Wright’s, inasmuch as their title to use such a label could come, under the evidence in this cause, only from Wright.
Has, then, Wright, or his assignees, now, or have they at any time since 1865, had any right at all to use a label having in it the word Durham as descriptive of smoking tobacco, and having also in it the figure of a short-horn bull, or any part of that animal, as a symbol of the word Durham ? Of course their title to use the word and the symbol stands on the same basis; if it.falls as to the word it falls also as to the symbol of the word.
There can be no doubt of Green’s original right to the exclusive use of the full figure of a short-horn bull as a trademark. That is virtually conceded by Wright himself in his testimony.
As to the word Durham as descriptive of smoking tobacco, the right to use it is in this ■cause claimed by defendants, who do business in Richmond, Va., and who advertise and sell, as Durham smoking tobacco, tobacco which they put up in Richmond, and which they obtain from any source available to them other than Durham.
Such a practice necessarily deceives every ■purchaser who, in purchasing this Durham smoking tobacco, believes that he is purchasing the fine tobacco put up in the place of that name in North Carolina. Dibrell & Co. claim solely from Wright. What then, is Wright’s title under which this deception comes about?
He claims that he did not, in 1801, sell his right in the label used by Morris & Wright, to his partner Morris, when he sold all his interest in the business. He claims that he derived the word Durham and the device of a short-horn bull from a Durham mustard box. He pretends that neither the word nor the device, as invented and used by him, was descriptive or geographical in purport, but that they were arbitrary symbols, and that having been so at the beginning he and his assig'nees have still a right to use them.
The objection to this pretension lies not merely - in the improbability of the origin of the use of the word Durham and its symbol which Wright recounts, or in the unsatisfactory character of the evidence on which his •original right to use the word and its symbol is based, or in the presumption that when he sold in 1SC1 he sold all his interest to Morris; but it lies also in these two facts, viz.: 1st. That whatever title Wright had to the use of the word Durham after leaving Morris, in or about the year 1861, was lost by non-use, his disuse continuing through a period of eight or nine years after he left the vicinity of Durham’s; and. 2d, That during this long period of disuse the brand of Durham smoking tobacco acquired a definite and peculiar meaning with dealers and consumers; the word Durham ceasing to be •{even if it ever was) a mere arbitrary term, and having obtained a geographical signification as to the place — Durham, and a commercial signification as to the article of tobacco manufactured at Durham. During the interval of disuse, the phrase Durham tobacco had come to indicate that portion of the product of a particular region of country which was marketed at the place called Durham’s or Durham. The phrase “Durham Smoking Tobacco” had come to indicate in all markets, and among all dealers and consumers, the smoking tobacco marketed and manufactured at this place of Durham, in North Carolina.
It was not until after this signification had attached to the phrase that "Wright adopted (or, as he pretends, returned to) the use of the word Durham, which he had abandoned. If, as he claims, the word Durham had in fact been used by him at first as an arbitrary trademark, and if, in addition, he had continued the use of it without interruption down to 1866 and on to the present time, that use by him would itself have prevented the other and local signification from attaching to the brand and word; for in that case, Durham smoking tobacco would have described two tobaccos: first, those marked and manufactured at Durham, and, second, those sprinkled with Wright’s “Durham” juice.
But he did abandon its use; he stood by for some eight years and allowed a peculiar commercial and local signification to attach to the word Durham as descriptive of smoking tobacco, and not until after that local and commercial signification had come to identify the tobacco labelled with the word all over the country as coming from a particular region and as having a particular quality, and not until after this brand had come to be worth thousands of dollars to the manufacturers of this particular tobacco at this particular place, did he begin or resume the use of the device, which he claims to have derived from the mustard can.
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HUGHES, District Judge.
It is useless to review all the points relied upon by counsel on each side in their able arguments in the cause. I shall consider only those questions upon which, in my judgment, the case really turns.
I shall first deal with the objection of es-toppel, or res judicata, urged by each party against the other.
In order for one suit to constitute an es-toppel upon any party to another suit, four conditions must coexist, viz.: 1st. There must be an identity of the cause, of action. 2d. There must be an identity of parties to the suit. 3d. There must be an identity in the character or quality of the respective parties; and 4th. There must be an identity of the thing in question. See Smith v. Turner [Case No. 13,119].
These conditions of identity do not exist between the present case and either of the cases of Blackwell v. Wright or Blackwell v. Armistead. Those cases, therefore, do not operate as estoppels. Nor do they at all affect the one now under consideration, except so far as they are precedents of authority upon the principles which were decided by them. In Blackwell v. Wright the decision was upon demurrer to the complaint; and, in technical effect, it was only that Blackwell had not traced his title to his trademark by proper allegations from Green; while, on the merits, the decision went only so far as to determine that the allegations of the complaint did not make a case of exclusive right to the trademark for the plaintiff. The complaint there did not charge that AVright’s use of the trademark was a fraud upon the public, or pray for an injunction on that ground. None of these allegations can be made of the complainants’ bill in this ease.
In Blackwell v. Armistead it is true that the decision was upon the principal questions raised in the present case; but owing to the character of the pleadings it was based upon grounds narrower and more technical than those upon which I propose to found the present decision. That suit was a trademark case. This is more, and involves the question of the fraudulent use of a trademark, to the injury of the public at large, as well as of the complainants. Therefore, neither of the two cases which have been urged in estoppel governs even as precedents the present one, which I shall now proceed to consider.
Two questions arise as to the pleadings and evidence:
1st. The first is, whether the defendants have any right at all to use a label in which the word Durham is used as descriptive of smoking tobacco, and in which the figure of a short-horn bull is used as a symbol of the word Durham; their right to the exclusive use of it not being claimed.
2d. The second question is, whether the complainants have a right to the exclusive use of such a label.
In considering the first question, I shall, for the sake of brevity, speak of the defend[553]*553ants’ right to use the label described as Wright’s, inasmuch as their title to use such a label could come, under the evidence in this cause, only from Wright.
Has, then, Wright, or his assignees, now, or have they at any time since 1865, had any right at all to use a label having in it the word Durham as descriptive of smoking tobacco, and having also in it the figure of a short-horn bull, or any part of that animal, as a symbol of the word Durham ? Of course their title to use the word and the symbol stands on the same basis; if it.falls as to the word it falls also as to the symbol of the word.
There can be no doubt of Green’s original right to the exclusive use of the full figure of a short-horn bull as a trademark. That is virtually conceded by Wright himself in his testimony.
As to the word Durham as descriptive of smoking tobacco, the right to use it is in this ■cause claimed by defendants, who do business in Richmond, Va., and who advertise and sell, as Durham smoking tobacco, tobacco which they put up in Richmond, and which they obtain from any source available to them other than Durham.
Such a practice necessarily deceives every ■purchaser who, in purchasing this Durham smoking tobacco, believes that he is purchasing the fine tobacco put up in the place of that name in North Carolina. Dibrell & Co. claim solely from Wright. What then, is Wright’s title under which this deception comes about?
He claims that he did not, in 1801, sell his right in the label used by Morris & Wright, to his partner Morris, when he sold all his interest in the business. He claims that he derived the word Durham and the device of a short-horn bull from a Durham mustard box. He pretends that neither the word nor the device, as invented and used by him, was descriptive or geographical in purport, but that they were arbitrary symbols, and that having been so at the beginning he and his assig'nees have still a right to use them.
The objection to this pretension lies not merely - in the improbability of the origin of the use of the word Durham and its symbol which Wright recounts, or in the unsatisfactory character of the evidence on which his •original right to use the word and its symbol is based, or in the presumption that when he sold in 1SC1 he sold all his interest to Morris; but it lies also in these two facts, viz.: 1st. That whatever title Wright had to the use of the word Durham after leaving Morris, in or about the year 1861, was lost by non-use, his disuse continuing through a period of eight or nine years after he left the vicinity of Durham’s; and. 2d, That during this long period of disuse the brand of Durham smoking tobacco acquired a definite and peculiar meaning with dealers and consumers; the word Durham ceasing to be •{even if it ever was) a mere arbitrary term, and having obtained a geographical signification as to the place — Durham, and a commercial signification as to the article of tobacco manufactured at Durham. During the interval of disuse, the phrase Durham tobacco had come to indicate that portion of the product of a particular region of country which was marketed at the place called Durham’s or Durham. The phrase “Durham Smoking Tobacco” had come to indicate in all markets, and among all dealers and consumers, the smoking tobacco marketed and manufactured at this place of Durham, in North Carolina.
It was not until after this signification had attached to the phrase that "Wright adopted (or, as he pretends, returned to) the use of the word Durham, which he had abandoned. If, as he claims, the word Durham had in fact been used by him at first as an arbitrary trademark, and if, in addition, he had continued the use of it without interruption down to 1866 and on to the present time, that use by him would itself have prevented the other and local signification from attaching to the brand and word; for in that case, Durham smoking tobacco would have described two tobaccos: first, those marked and manufactured at Durham, and, second, those sprinkled with Wright’s “Durham” juice.
But he did abandon its use; he stood by for some eight years and allowed a peculiar commercial and local signification to attach to the word Durham as descriptive of smoking tobacco, and not until after that local and commercial signification had come to identify the tobacco labelled with the word all over the country as coming from a particular region and as having a particular quality, and not until after this brand had come to be worth thousands of dollars to the manufacturers of this particular tobacco at this particular place, did he begin or resume the use of the device, which he claims to have derived from the mustard can. To put that word now on tobaccos grown elsewhere than at Durham, even though sprinkled with his “Durham” decoction, is, in the light of the evidence in this case, to pass them off as tobaccos coming from Durham, and is to deceive and defraud all who deal in and purchase the commodity as smoking tobacco from Durham. It has so come to pass from Wright’s non-use for eight years, that to manufacture and sell other tobaccos at all and brand them with the word Durham is to deceive the public, no matter what liquid may be used on them. Under existing circumstances, to manufacture even Durham tobaccos elsewhere than at Durham, and to sprinkle them with a foreign liquid, is to deceive the public generally, and those who put up the genuine article at that place particularly. The manufacture of these tobaccos at that place is the best guarantee which the public and the trade can have that the commercial article labelled Durham Smoking Tobacco, and sold in all markets, is [554]*554genuine, and prepared under the fewest temptations to adulteration.
NOTE [from original report]. This trademark had been the subject of a previous suit in the circuit court of the western district of Virginia The * * * decision of Judge Rives on similar questions to those decided, as just reported by the circuit court of eastern district of Virginia, [will be found in Blackwell v. Armistead, Case No. 1,474.]
That tlie right to use a trademark may be lost by abandonment or disuse is too clear to need argument or the support of authority. The law of the subject is stated in the chapter on Abandonment, sections 674 to 691, of Browne on Trade-Marks.
It cannot be pretended that in Green’s first use of his label, in 1865 or 1866, he had any intention of taking up an old label at second hand, or had any knowledge or belief that Wright, or any one else, could claim the label which he then devised as entirely novel and peculiar. The field was open to his enterprise and invention, for establishing his business and inventing his label and trademark just as he did.
Green’s adoption in 1865 or ’60 of the word Durham, as descriptive of the best tobacco of North Carolina put up by him, and of the bull as a symbol of the word, was naturally suggested by the facts of his business. If Wright had ever had such a label, which I do not feel that the evidence warrants us to believe, it was in 1865-66 unknown in Durham; had been abandoned even then for some four years; had never signified anything but tobacco sprinkled with Wright’s decoction; and had never borne the valuable and creditable commercial signification which the climate and soil and good husbandry of North Carolina and the enterprise of a Durham manufacturer were about to give it.
By the several facts, of Wright’s non-user of the label for eight years; of its never having, even as claimed by him, had any but an arbitrary significance as tobacco sprinkled with a species of artificial treacle; and of its having during a long period of disuse acquired a new, wholly different, and well and widely known geographical and commercial signification, Wright lost his right of using-the label altogether. His use of it now operates necessarily to mislead and deceive the public as to the source of production and quality of the article bearing the label, thereby defrauding them; and the court will therefore make a decree of perpetual injunction against the further use of it.
As to the second question, whether Blackwell & Go. have an exclusive right to the use of the label described in the pleading, I think on the evidence submitted that they have. We have no hesitation in so deciding as against the defendant in this cause, and will incorporate in the decree of the court an order for an account of profits against the defendant as prayed for in the bill.
The label and trademark of complainants was established in 1865 by J. It. Green. His business and that of his successors built up the insignificant and obscure place, Durham’s Station, into the flourishing town “Durham.” The town grew up during the first four or five years of the use of the label, and owed its growth in chief part to the business indicated by the label. In that respect the case is similar to that of the trademark Oocoaine. Burnett v. Phalon, 3 Keyes [*42. N. Y.] 594. In respect to the commercial article bearing the geographical name, it is similar to that of the Akron cement. Newman v. Alvord, 51 N. Y. 189. The right of the complainants in this case has the double strength of that of the proprietors of the trademark Cocoaine, and of that of the Akron cement. The use of the principal characteristics of their trademark by manufacturers not conducting their business at Durham is a deception put upon the public, and may be enjoined on that ground alone, irrespectively of the trademark right. The us e of the trademark invented by Green under, which he and his successors built up his trade, and built up the town of Durham, like the use of the word Akron to the proprietors of the commercial article bearing that name, belongs exclusively to the successors of Green, and the court should secure its exclusive use to them.
I had some doubt whether in a litigation-between Blackwell & Co., on the one hand, and defendants not doing business in the town of Durham on the other, it was competent for the court to decree that Blackwell & Co. have the exclusive right to the use of the word and symbol characterizing their trademark; but it is certainly competent for us to render a decree responsive to the issues made up by the allegations and denials of the bill and answer, one of which is this right of exclusive use claimed by Blackwell & Co. As between the complainants and defendants in this suit, therefore, we may so decree, even though other persons than the defendants to this record be not bound by the decree.