American Wine Co. v. Kohlman

• Decision Date: 11 December 1907
• Docket Number: 256.
• Citation: 158 F. 830
• Parties: AMERICAN WINE CO. v. KOHLMAN et al.
• Court: U.S. District Court — Southern District of Alabama

158 F. 830

AMERICAN WINE CO. v. KOHLMAN et al.

No. 256.

United States Circuit Court, S.D. Alabama.

December 11, 1907

Fitts Leigh & Leigh, for defendants.

TOULMIN District Judge.

The substance of the bill of complaint is that the complainant is a corporation incorporated under the laws of the state of Missouri, in and by the name of 'American Wine Company'; that, subsequently, it acquired by 'letters patent' a trade-mark, the material and principal part of which is the name 'American Wine Company'; that under said name complainant has for many years engaged in the business of manufacturing, dealing in, and selling wine, and is still so engaged; that under said name it has acquired an extensive and profitable business, and established a reputation as a reliable manufacturer and dealer in pure and superior wines, which has been of great value to it; that within the past year the defendants have, without any authority or permission from complainant, appropriated and used the said business and corporate name of complainant in its public advertisements, and in issuing and distributing letter heads and envelopes bearing the name 'American Wine Company'; that defendants organized a corporation under the laws of the state of Alabama under the corporate name of complainant 'American Wine Company'; that they are conducting their business under said corporate name that the defendants, well knowing the high reputation of complainant, assumed and appropriated the name of complainant for the express purpose of deceiving the public and securing trade that would naturally come to complainant, and that persons were deceived into believing that they were dealing with complainant, when, in truth and in fact, they were dealing with defendants. The bill further alleges that complainant objects to and complains of the appropriation and assumption of its corporate name and the use of its trade-mark and name, and the deception of the public as aforesaid. The prayer of the bill is that defendants be enjoined from using the name of the complainant, or conducting any business or making any sales under the name of the 'American Wine Company- '; and also prays for such other or further relief as complainant may be entitled to, the premises considered. The case is submitted on motion to dismiss the bill for the want of equity, and on demurrers to the bill.

Geographical terms and words descriptive of the character, quality, or place of manufacture of an article are not capable of monopolization as a trade-mark. To entitle a person to the protection in the use of a name as a trade-mark his right to use it must be exclusive, and not a name which others may employ with as much truth as he who uses it. Burton v Stratton (C.C.) 12 F. 700; Continental Ins. Co. v. Continental Fire Ass'n, 101 F. 257, 41 C.C.A. 326; Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581; Mill Co. v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151, 37 L.Ed. 1144; Chemical Co. v. Meyer, 139 U.S. 540, 11 Sup.Ct. 625, 35 L.Ed. 247; Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 9 Sup.Ct. 166, 32 L.Ed. 535; Shaver v. Heller Merz Co., 108 F. 831, 48 C.C.A. 48; Elgin Nat. Watch Co. v. Ill. Watch Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365.

'It is one of the fundamental rules of the law of trade-mark that words or even symbols which are descriptive of the kind, quality, nature, properties, or place of manufacture of an article to which the words are applied cannot be appropriated as a trade-mark, as respects that article. ' Brennan v. Emery-Bird-Thayer Dry Goods Co., 108 F. 627, 47 C.C.A. 532.

The word 'American' is broadly geographic. Draper v. Skerrett (C.C.) 116 F. 206. I am clear on the proposition that the words 'American Wine Company' are not in themselves a good trade-mark, and cannot be exclusively appropriated as a trade-mark or trade-name.

It appears from the allegations of the bill and the prayer for specific relief that this suit is based on an alleged infringement of a trade-mark. It, therefore, rests on the ownership of the trade-mark, the title to which is indispensable to a good cause of action. Being of opinion that the complainant has no exclusive proprietary interest in the words of the alleged trade-mark, it is not entitled to the specific relief prayed for.

There is, however, another class of suits based on what is called unfair competition in trade. The sale of the goods of one manufacturer or vendor as those of another is unfair competition, and constitutes a fraud which a court of equity may lawfully prevent by injunction.

In Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 11 Sup.Ct. 396, 34 L.Ed. 997, the court says:

'Undoubtedly an unfair and fraudulent competition against the business of plaintiff, conducted with the intent on the part of the defendant to avail itself of the reputation of the plaintiff to palm off its goods as plaintiff's, would, in a proper case, constitute ground for relief.'

But, as said by the court in Draper v. Skerrett, supra:

'To justify a court of equity in interfering, there must be something more than the mere duplication by the one party of the other's trade-name. This is found in the deceptive use of imitative methods of display or other devices by which the public are led into buying the infringer's goods when they intended to buy those of the original producer. The fraud which is thus

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