Piper v. Laughman

18 A. 415, 128 Pa. 1, 1889 Pa. LEXIS 766

• Court: Pennsylvania Court of Common Pleas, Philadelphia County
• Decided: October 7, 1889
• Docket: No. 87
• Status: Published

Opinion

Opinion,

Mr. Justice Clark :

The plaintiffs, W. H. Piper & Co., are miners and shippers of bituminous coal in Cambria county. They are engaged in mining what is known on the geological maps of the state as the Miller vein, at Ben’s creek, on the western slope of the Allegheny mountains; their mines are located upon what was sometimes called the Big Survey, containing an area of about ten square miles, or over six thousand acres. This large body of land, it is said, was conveyed by William Penn directly to one Arent Sonman, and hence has been generally known as 'the Sonman survey. From the testimony of Mr. Westbrook, it appears that in the Sonman tract there are several seams or veins of coal, one above another. Mr. Westbrook says: “The bottom vein is known as vein A; a short distance above this is a small vein known as A primal; the next higher vein is known as vein B, and a few feet above this is a smaller vein known as B primal; the next is known as C, and so on to E; E being the highest upper workable vein. These are the designations given in geological surveys. These several veins have other several local designations; they are known by miners in the neighborhood by the name of the person who owned them. The Lemon vein was so named because it was opened by John A. Lemon or his father. The Lemon vein is vein E, and the Miller vein, said to have been first opened by a man of that name, is vein B. The coal mined from the same vein in different localities is not always of the same quality. The Miller vein, or vein B, at Gallitzin, ten miles east of Sonman, is very much softer; while at South Fork, which is eight or ten miles from Sonman west, it is very much harder. In some cases, two or three miles make a difference in the quality of the coal from the same vein.”

In December, 1872, the Cambria Mining and Manufacturing Company, the owner of the Sonman survey, by an instrument of writing in the form of a lease, granted to Dysart and Laugh-man, for a term of ten years, the right to mine, transport, and sell coal out of the Miller vein from a certain drift opened “ nearly opposite a point on Ben’s creek known as Ben’s Hole.” On January 1, 1874, Piper became a partner, the business was conducted under the name of Dysart & Co., and the firm commenced to mine and ship coal in considerable quantities therefrom to market. On July 26, 1879, the firm of Dysart & Co. dissolved, Dysart and Laughman transferring their interest to Piper. The lease was afterwards extended, and Lewars became associated with Piper as a partner under the name of W. H. Piper & Co., the complainants in the bill. Upon the dissolution of the firm of Dysart & Co., Dysart and Laughman began operations upon another portion of the Sonman tract, and were, and are now, engaged somewhat extensively in the mining and shipping of coal therefrom.

The complainants in the bill allege that soon after the formation of the firm of Dysart & Co., which was on January 1, 1874, the firm sought to select and establish a trade-name for their coal; that “ Ben’s Creek ” and “ Eureka ” were at first suggested, and, upon due consideration, the latter name was adopted; but when it was afterwards discovered that this was an infringement upon the trade-name of Berwind, White & Co., also miners and shippers of coal from the Clearfield region, the name “ Sonman ” was adopted as a trade-name, and that name has ever since been used and applied as the trade-name of all the coal shipped from their mines; that their coal is known and recognized in the trade as “ Sonman Coal,” and is thus distinguished from other kinds and qualities of bituminous coal in the market. The plaintiffs complain that the defendants are infringing their right, by wrongfully and fraudulently shipping an inferior coal under the same trade-name, and offering it for sale as Sonman coal, thus inducing dealers and consumers to suppose that the coal which they buy from the defendants is the Sonman coal of the plaintiffs.; whereby the public is deceived and the reputation of the plaintiffs’ coal is injured, etc.

It is clear from the evidence, and the fact is found by the master, that the coal taken from these mines has heretofore been spoken of and sold as “ Sonman Coal.” Pripr to 1874, however, the term “ Sonman ” would seem to have been applied, not as a trade-name, but merely as descriptive of the location of the mines. Mr. Alexander M. White, who mined the Lemon vein in 1852 or 1853, says: “We called it the Son-man coal in contradistinction to the Lilly Mill coal, which was mined east of it, between planes 3 and 4; this was a common appellation for it; we called the coal from that survey Sonman coal.” Hon. John Dean testifies, that there were about five thousand acres known to him as the Sonman lands; that the coal is called the Sonman coal, and that he always heard it called by that name; and that it was a very common name as far back as 1854. Mr. Westbrook, who opened the Miller vein and sold coal to the Altoona Manufacturing Company, to the Logan Iron and Steel Works, to the Phoenix Iron Company, and to dealers, says: “I always called all coal mined and shipped Sonman coal, as designating the locality or region in which it was mined; sometimes, however, designating the coal by the name of the vein by which it is known.”

But the plaintiffs have introduced evidence to show that a short time after January 1, 1874, they formally adopted the term “ Sonman ” as a trade-mark or name for their coal, and they now seek an injunction to restrain the use of that term by the defendants to any of their coal, even though the same he mined from the Sonman lands.

The ownership of a trade-mark has, in general, been considered as a right of property, and equity will protect that right from infringement: proof of fraud is not required; the mere violation of the right is sufficient to induce the exercise of the equity powers of the courts. The trade-name of any natural product or other article of manufacture, upon which a trademark cannot conveniently be affixed, though not strictly a trade-mark, is, nevertheless, a species of property and will, as a general rule, be protected in like manner. Trade-marks are the proper subject of assignment, to the extent, at least, that unless reserved they pass with an assignment of business: Sebastian on Trade-marks, 236 ; and the assignment by one partner of all his interest in a firm to his copartners will carry with it the exclusive use of the trade-mark of the firm: Menendez v. Holt, 128 U. S. 514. “ As distinct property, separate from the article^, created by the original producer or manufacturer, it may not be the subject of sale; but when the trade-mark is affixed to articles manufactured at a particular establishment and acquires a special reputation in connection with the place of manufacture, and that establishment is transferred, either by contract or operation of law, to others, the right to the use of the trade-mark may be lawfully transferred with it. Its subsequent use by the person to whom the establishment is transferred, is considered as only indicating that the goods to which it is affixed are manufactured at the same place, and are of the same character as those to which the mark was attached by the original designer.” Such is the appropriate language of Lord Cransworth, in the case of Leathercloth Company v. The American Leathercloth Company, in 11 Jur., N. S. 513; Kidd v. Johnson, 100 U. S. 617. We assume, therefore, that W. H. Piper, as the assignee of Dysart and Laughman, possessed the rights of the firm of Dysart & Co. in any trademark which that firm, at the time of its dissolution, may have acquired, and, with his approval, the new firm of W. H. Piper & Co. were certainly entitled to exercise that right.

But we are not clear that either Dysart & Co., or W. H. Piper & Co., or any other parties operating the Sonman mines, had a right to appropriate the term “ Sonman ” to the exclusion of others similarly engaged. The object of a trade-mark is that the article, to which it is attached or belongs, may be distinguished from articles of a similar kind, and thus be known and identified in the market; its purpose is to indicate the personal origin of the article to which it is applied, or the source from which it comes. The office of a trade-mark is thus defined by Mr. Justice Fieud, in Manufacturing Go. v. Trainor, 101 U. S. 53: “ Every one is at liberty to affix to the product of his own manufacture any symbol or device not previously appropriated, which will distinguish it from articles of the same general nature, manufactured or sold by others, and thus secure to himself the benefits of increased sale by reason of any peculiar excellencies he may have given to it. The symbol or device thus becomes a sign to the public of the origin of the goods to which it is attached, and the assurance that they are the genuine article of the original producer.”

But in the exercise of the right to establish a trade-mark, there are certain limitations which must be observed. No property can be acquired in any word, mark, or device, which denotes merely the nature, kind, or quality of an article. Thus, in Raggett v. Findlater, L. R. 17 Eq. 29, an injunction to restrain the use of the words “ Nourishing Stout,” which the plaintiff had previously used, was refused upon the ground that “ nourishing ” was a mere English word denoting quality. “ The owner of an original trade-mark has an undoubted right to be protected in the exclusive use of all the marks, formsi or symbols that are appropriate as designating the true origin tfr ownership of the article or fabric to which they are attached; but he has no right to the exclusive use of any words, letters, figures, or symbols which have no relation to the origin dr ownership of the goods, but are only meant to indicate their names or quality. He has no right to appropriate a sign or 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: ” Amoskeag Manufacturing Company v. Spear, 2 Sandf. S. C. 599. And whilst the office of a trade-mark is to indicate the personal origin or ownership of an article, yet a merely geographical name cannot be so used: Bispham’s Eq., § 457; Canal Company v. Clark, 13 Wall. 311. In the case last cited, it was held that the word “ Lackawanna,” which is the name of a region of country in Pennsylvania, could not, by combination with the word coal, constitute a trade-mark, because every one who mined coal in the valley of the Lackawanna had a right to represent his coal as Lackawanna coal. “ The word ‘ Lackawanna,’ ” says Mr. Justice Strong, “was not devised by the complainants. They found it a settled and known appellative of the district in which their coal deposits and those of others were situated. At the time they began to use it, it was a recognized description of a region and, of course, all the earths and minerals in the region.”.....“It must then be considered as sound doctrine,” says the learned Justice, “that 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 appellation as to prevent others inhabiting the district, or dealing in similar articles coming from the district, from truthfully using the «ame designation. It is only when the adoption or imitation of what is claimed to be a trade-mark amounts to a false representation, expressed or implied, designed or incidental, that there is any title to relief against it.”

In the ease of Newman v. Alvord, 49 Barb. 588, the plaintiffs manufactured a cement at Akron, N. Y., and sold it under the name of “Akron Cement.” The defendants made the same sort of cement at Syracuse, and labeled it “ Onondaga Akron Cement.” The court held that, “though all the world had a right to manufacture cement at Akron and call it Akron cement, yet the action of the defendants, in calling their cement made at Syracuse, Akron cement, was a fraud on the plaintiffs and on the public, and should accordingly be restrained.” To the same effect is our own case of Glendon Iron Co. v. Uhler, 75 Pa. 467, where a corporation adopted the trade-mark “ Glendon ” upon their iron. The place where their furnaces were located was afterwards erected into a borough by the name of Glendon. Another company, engaged in business in the same place, afterwards used the word “ Glen-don ” on their iron, and it was held that the second company was justified in so doing. “ The appellees,” said this court in the case cited, “ put upon their pigs the initials of their firm and the name of their town. That name was Glendon to the whole world. It cannot be that the previous appropriation by the appellants of the word which now is the name of the town, prevents any other manufacturer of pig iron within its limits from using the same word. If it be so now, it may continue through all coming time. The boundaries of the town may be enlarged ; the borough may grow into a city; the manufacturers of pig iron may be multiplied, and the word most expres sive to indicate their location must be denied to all save one. So far as the authorities go to restrain a manufacturer from the adoption of a truthful trade-mark, we will endeavor to enforce them; when asked to go further we must decline. If the effect of the incorporation of the appellants’ district of country into a town by the name of Glendon, has been to deprive them of some of their former rights, they must submit to the consequences.” It is upon the same principle that every person may put his own name upon his own goods, notwithstanding another person of the same name may, in that name, manufacture and sell the same or a similar article: Burgees v. Burgees, 17 Eng. L. & E. 257.

Applying these principles to the case now under consideration, it seems clear that the plaintiffs are not entitled to the exclusive use of the word “ Sonman ” as a trade-mark. It is clear, from the evidence, that Sonman is a word of geographical signification ; it denotes a specific territory or region of country of considerable extent, which is and for many years both before and since the trade-name was adopted has been devoted to the production of a somewhat peculiar quality of coal by different operators. In the year of 1854 the village of Sonman was built upon this tract. Mr. Alexander M. White testifies, “ That the village consisted of a steam saw-mill, a store, a dwelling which he constructed for himself, one for his superintendent, and six tenement houses. The village was on the main line of the Pennsylvania Railroad, and although at first there was no station, a siding was constructed to facilitate the shipping of coal and lumber.” Mr. Richard P. Westbrook testifies, “that in 1867 there was a settlement or village, consisting of two large mansion houses, one 40 by 60, the other 30 by 40, a steam sawmill, a store-house in which was kept a company store, two barns, one of which was very large, a blacksmith shop, several tenements for workmen, and an iron siding connecting the lumber yard with the Pennsylvania Railroad. There were several other houses or tenements in different parts of the Sonman property. This village was known by the name of Sonman. There was a post-office there at that time, kept in the storehouse. James A. Shoemaker was the postmaster.” He further testifies, “that a station was established at Sonman by the Pennsylvania Railroad Co. in 1871; the building was destroyed by fire. In the latter part of 1872 or the early part of 1873, the Pennsylvania Railroad Co. erected a permanent building there for ticket and freight purposes and appointed an agent. About the same tirhe, a telegraph station was established there by the Western Union Company; both the railroad station and the telegraph station were called Sonman. There was a post-office called Sonman located there previous to 1857. A. F. Cantwell was postmaster in 1857. The office was continued by that name for more than ten years; and when Shoemaker removed from Sonman, a man residing at Portage, one mile west, was appointed, and he removed the office from Sonman to Portage.” Mr. Martin says that in 1869 the saw-mill was gone; the post-office had been removed to Portage, and some houses were vacant, but the mines were still in operation, and continued to be in operation until the railroad and telegraph stations were established in 1872 or 1873 and ever since that time.

It may be that the Sonman tract does not present the features of what the appellees call an independent region; that it is not so extensive or so sharply defined in its natural boundaries as the Lackawanna Valley; it may be, also, that Sonman cannot be considered as a separate coal basin, or even as a sub-basin, yet it is plain that it had received a distinct geographical recognition from the public. These lands, for many years prior to the time that the plaintiffs adopted their trade-name, were, as we have seen, known as the Sonman survey. Its boundaries were marked and defined úpon the map of Cambria county; the village erected thereon was Sonman; the post-office was Sonman; the railroad station was Sonman; the telegraph office was Sonman; the coal taken from the mines was shipped as Sonman coal, and, by this desciption, was known in the market. Can it be doubted that the term Sonman, in the year 1874, was a name descriptive of a locality? If it was, the name, when applied to its own natural products, must be taken in its geographical sense. We do not say that a geographical name may not, in some oases or under some circumstances, be applied as a trade-name; but we do say, that when the article to which it is applied is a product of the place named, the term cannot be used as a trade-name by one to the exclusion of others, owners of like products of the same place. This is the doctrine of all the cases. The case of Wotherspoon v. Currie, L. R. 5 E. & I. App. 512, relied upon by the appellees, when properly considered and understood, will be found, we think, to be consistent with this statement of the law. In that case, as we understand it, the trade-name “ Glenfield ” was applied to a starch which, at the time of the infringement, was not made at Glenfield, but elsewhere. The name was then used, and for some time before that had been used, in an entirely fictitious sense; as denoting the personal origin of the article known as “ Glenfield Starch,” and not in connection with the place of its manufacture. The word Glenfield, assuming that it maj^ have a geographical import at first, was at the time of the infringement, used in an entirely different sense, and for a wholly different purpose; and the remarks of the Lord Chancellor are intended to emphasize the fact that the defendant, who was then the owner of Glenfield, had nothing to lose in being denied the privilege of affixing the name of his private estate to his products, as the place was of little consequence, and he could hope for no advantage therefrom, only from the fact, of considerable importance, that the plaintiff had manufactured a superior article of starch known by that name, which had a great reputation in the market, and of which he had made large sales.

It is doubtless true, as a general proposition, that the name of a private estate may be used by the owner as a trade-name. The case just cited is an illustration in point; for the plaintiff, in that case, at first manufactured starch on the private estate of Glenfield, and called his starch Glenfield. He removed from his private estate, but retained for his starch manufactured elsewhere the same trade-mark, and his right to do so was sustained by the judgment. But Sonman is not the name of a private estate in this sense; it is the name of a large boundary of land containing a number of separate private estates, owned by a number of different persons, all of whom are engaged in the same business of mining and shipping coal; and we hold that no one of these can assume and adopt, as a trade-name, the name by which the place is generally known in the geography of the country, to the exclusion of others.

The decree is reversed, and the bill is dismissed at the cost of the appellees.

On November 4,1889, a motion for a re-argument was refused.