179 U.S. 665 (1901), 121, Elgin National Watch Company v. Illinois Watch Case Company
|Docket Nº:||No. 121|
|Citation:||179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365|
|Party Name:||Elgin National Watch Company v. Illinois Watch Case Company|
|Case Date:||January 07, 1901|
|Court:||United States Supreme Court|
Argued December 6, 1900
APPEAL FROM THE CIRCUIT COURT OF
APPEALS FOR THE SEVENTH CIRCUIT
The term "trademark" means a distinctive mark of authenticity through which the products of particular manufacturers or the vendible commodities of particular merchants may be distinguished from those of others.
As its office is to point out distinctively the origin or ownership of the articles
to which it is affixed, no sign or form of words can be appropriated as a valid trademark which, from the fact conveyed by its primary meaning, others may employ with equal truth and with equal right, for the same purpose.
Words which are merely descriptive of the place where an article is manufactured cannot be monopolized as a trademark, and this is true of the word "Elgin," as in controversy in this case.
Where such a word has acquired a secondary signification in connection with its use, protection from imposition and fraud will be afforded by the courts, while at the same time it may not be susceptible of registration as a trademark under the Act of Congress of March 3, 1881.
The parties to this suit being all citizens of the same state, and the word in controversy being a geographical name which could not be properly registered as a valid trademark under the statute, the circuit court had no jurisdiction.
In view of this conclusion and of the fact that the constitutionality of the act of Congress was not passed on by the court below, that subject is not considered.
This was a bill filed in the Circuit Court of the United States for the Northern District of Illinois by the Elgin National Watch Company, a corporation organized under the laws of the State of Illinois, having its principal place of business at Elgin and its office in Chicago in that state, against the Illinois Watch case Company, also a corporation of Illinois, with its principal place of business at Elgin, and certain other defendants, citizens of Illinois.
The bill alleged:
That prior to the 11th day of April, A.D. 1868, your orator was engaged in the business of manufacturing watches at Elgin, Illinois, which was then a small town containing no other manufactory of watches or watch cases; that your orator had built up at said town a very large business in the manufacture of watches and watch movements, and that said watches and watch movements so made by your orator had become known all over the world, and had been largely sold and used not only in this but in foreign countries.
. . . That at and before said 11th day of April, A.D. 1868, your orator had adopted the word "Elgin" as a trademark for its said watches and watch movements; that said trademark was marked upon the watches and watch movements
made by your orator, both upon those which entered into commerce in this country and those which were exported to and sold in foreign countries; that your orator's watches became known all over the world as Elgin watches, and their origin and source, as a product of your orator's manufacture, were distinguished from those of all other watches manufactured in any part of the world by said distinguishing word or trademark "Elgin;" that from said 11th day of April, A.D. 1868, to the present time, your orator, both in the goods manufactured and sold by it in this country and those exported by it to and sold in foreign countries, has continued to use said trademark upon its watches and watch movements, and is still using it, and that said trademark has always served and still serves to distinguish your orator's product from that of all other manufacturers.
. . That at the time of its adoption of said trademark, no other person, firm, or corporation engaged in the manufacture or sale of watches was using the word "Elgin" as a trademark or as a designation to designate its goods from those of other manufacturers, and that your orator had the legal right to appropriate and use the said word as its lawful trademark for its watches and watch movements.
. . That the watches and watch movements made by your orator have achieved a very great reputation throughout the world, and that such reputation is of great commercial value to your orator in its business aforesaid.
It was further averred
that, on the 19th day of July, A.D. 1892, under the act of Congress relating to the registration of trademarks, your orator caused said trademark to be duly registered in the Patent Office of the United States according to law, as by the certificate of said registration, or a copy thereof, duly certified by the Commissioner of Patents, here in court to be produced, will more fully and at large appear.
The bill charged that defendants had infringed the rights of complainant by engraving or otherwise affixing the word "Elgin" to the watch cases made and sold by them; that such watch cases were adapted to receiving watch movements
of different construction from those made by complainant; that inferior watch movements were liable to be and often were encased in them, and that, when so encased, the entire watch, including both movement and case, appeared upon the market with the word "Elgin" upon it, thereby leading the public to believe that the watch as an entirety was made by the complainant, and enabling parties wrongfully using complainant's trademark to profit by the great reputation of complainant, to palm off other and inferior goods as goods made by complainant, to injure the reputation of complainant as a watchmaker, and to deprive it of a portion of the business and patronage which it would otherwise receive from the public, to the irreparable damage of complainant.
The prayer was for damages and for an injunction to restrain defendants
from directly or indirectly making or selling any watch case or watch cases marked with your orator's said trademark, and from using your orator's said trademark in any way upon [21 S.Ct. 272] watches or watch cases or in the defendants' printed advertisements, circulars, labels, or the boxes or packages in which their said watch cases are put or exposed for sale.
A demurrer having been overruled, defendants answered denying the legality of the registration of the alleged trademark, and any attempt on their part to deceive the public, or the doing of anything they did not have the legal right to do, and asserting that they had never...
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