51 N.Y. 189, Newman v. Alvord

Citation:51 N.Y. 189
Party Name:EDMUND J. NEWMAN et al., Respondents, v. EARLE B. ALVORD et al., Appellants.
Case Date:September 01, 1872
Court:New York Court of Appeals

Page 189

51 N.Y. 189

EDMUND J. NEWMAN et al., Respondents,


EARLE B. ALVORD et al., Appellants.

New York Court of Appeal

September 1, 1872

Argued May 15, 1872.

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[Copyrighted Material Omitted]

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John Ganson for the respondents. The name of a place may be adopted and used as a trade-mark. (Cong. Spring Co. v. High Rock Spring Co., 45 N.Y. 291, 295, 298; Seixo v. Provezende, 1 Chy. Apps. [ L. R.], 192; Newman v. Alvord, 49 Barb., 597; Dixon Co. v. Guggenheim, 2 Brews. [ Penn.], 335.) Defendants' adoption and use of the word "Akron" in their business was an infringement upon plaintiff's trademark. (Amoskeag Manuf. Co. v. Spears, 2 Sandf., 599, 605, 607; Farnia v. Silverlock, 39 Eng. L. and Eq., 514; Collins Co. v. Cohen, 3 Kay & J., 428; Cong. Spring Co. v. High Rock S. Co., 45 N.Y. 291; Krott v. Morgan, 2 Kern., 213; 17 [N. S., 8] Am. Law Reg., 402, note, p. 408; Taylor v. Taylor, 23 Eng. L. and Eq., 281; Croft v. Day, 7 Beav., 74.) Plaintiffs have acquired a right to use the word "Akron" in designating their cement to the exclusion of defendants. (S. L. 1862, 513, 514; Bloss v. Bloomer, 23 Barb., 604; S. L. 1863, chap. 209, § § 1, 2.)

Amasa J. Parker for the appellants. The name of a place can never be appropriated and used as a trade-mark. (Wolfe v. Goulard, 18 How. Pr., 64; Upton on Trade-Marks, 29; Burgess v. Burgess, 17 Eng. L. and Eq., 257; Brooklyn White Lead Co. v. Masury, 25 Barb., 416; Candee v. Deere, 10 Am. Law R. [ N. S.], 694, 707; Wetherspoon v. Carril, 23 Law Times R., 443.) To entitle a person to use as his own any particular word as a trade-mark, his right thereto must be exclusive as against all persons. (Amoskeag Manuf. Co. v. Spear, 2 Sandf., 559; Corwin et al. v. Daly, MS. op., cited Upton on T. M., 187, 209, 48, 23, 99; Stokes v. Landgruff, 17 Barb., 611;

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Partness v. March, 2 Barb. Chy., 104; Furness v. Merchant, 4 Abb., 157; Candee v. Deere, 10 Am. Law R. [ N. S.], 707; Farmer v. Silverlock, 6 De Gex, M. & G., 214; Perry v. Turefitt, 6 Beav., 66; Fitridge v. Wells, 13 How. Pr. R., 385; Partridge v. Menck, 2 Barb. Chy., 101; Pidding v. How, 8 Simons, 477; Town v. Stetson, 5 Abb. Pr. [N. S.], 218.) A trade-mark is protected only when it denotes the origin or ownership of the goods. (Upton on T. M., 26, 98, 99; Collins v. Cowen, 3 Kay & J., 428, and cases above cited.) Defendants did not attempt to perpetrate a fraud. (Welch v. Knott, 4 Kay & J., 747; Partridge v. March, 2 Sandf. Chy., 622; Merrimac Manuf. Co. v. Garner, 2 E. D. Smith, 387; Clark v. Clark, 25 Barb., 79; Upton on T. M., 203, 214.)


The cement manufactured by the plaintiffs was made from stone taken from certain quarries located in the town of Newstead, in Erie county, near the village of Akron. While they did not own all the quarries, and there were others, therefore, who could manufacture the same kind of cement, it does not appear that any one else was engaged at the time of the commencement of this suit in manufacturing cement from these stone, or in selling any cement manufactured from them, as Akron cement. They and those to whom they succeeded had for many years been engaged in manufacturing this cement and selling the same as Akron cement, and it was known in market by that name. Their barrels were labeled as follows: "Newman's Akron Cement Co., manufactured at Akron, N.Y. The hydralic cement, known as the Akron Water-Lime." The defendants labeled their barrels as follows: "Alvord's Onondaga Akron Cement or Water-Lime, manufactured at Syracuse, New York. " They placed the word "Akron" upon their label for the purpose of increasing their sales and availing themselves of the reputation acquired by plaintiffs' cement. The label was calculated to induce ordinary buyers to believe that they were purchasing either plaintiffs' cement, or cement of the same kind and value.

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Such buyers would not generally know that Akron and Syracuse were places at a large distance apart, and if they did know this, they might suppose that the stone were transported to Syracuse and there manufactured into cement.

Hence, it cannot be doubted that the plaintiffs are entitled to the relief which they demand, if they have the right as against the defendants to the exclusive use of the word "Akron" as their trade-mark. The question is not before us, and it is not necessary for us to determine, whether any other owner of a portion of the same quarries could not manufacture cement and label it Akron cement. The sole question to be determined is whether the plaintiffs, who were the only persons engaged in manufacturing and selling the real Akron cement, which is known and has a reputation in market as such, can be protected in the use of the word "Akron" against the defendants, who used it to defraud the plaintiffs and deceive the public.

It is objected that the plaintiffs could not adopt the name of a place as a trade-mark; a trade-mark is properly defined by Upton (Upton's Trade-Marks, 9) as "the name, symbol, figure, letter, form or device adopted and used by a manufacturer or merchant, in order to designate the goods that he manufactures or sells, and distinguish them from those manufactured or sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry or enterprise." The trade-mark must be used to indicate not the quality, but the origin or...

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