Canal Company v. Clark

• Citation: 20 L.Ed. 581,13 Wall. 311,80 U.S. 311
• Parties: CANAL COMPANY v. CLARK
• Decision Date: 01 December 1871
• Court: United States Supreme Court

80 U.S. 311

20 L.Ed. 581

13 Wall. 311

CANAL COMPANY v. CLARK.

December Term, 1871

APPEAL from the Circuit Court for the Southern District of New York; the case, which arose on a bill to enjoin the use of an alleged trade-mark, being thus:

In the northeastern section of Pennsylvania there exists a place or region to which from early times the name of Lorckaworna, or Lackawanna, seems, on the few occasions when the place is mentioned, to have been given. As early as 1793, the diary of William Colbert, a pioneer preacher of the Methodists, makes record of his meeting a person who lived at 'Lackawanna,' and of his crossing a mountain and getting there himself. A deed, dated in 1774, speaks of a river running through that valley or region as 'the Lackaworna,' and another deed dated in 1796 conveyed 'lands lying and being in Upper Settlement, so-called, and abutting on each side of the Lackawanna.' The region, however, in those early times was uncultivated and little known to people generally in any way, and the name was unheard of and unnoted except by those who were dwelling in the very district.

The discovery and use of coal in Pennsylvania, soon after the year 1820, wrought an immense change in the whole northeastern part of the State. It brought this valley and others, as, for example, the Wyoming, Lehigh, and Schuylkill, into very prominent position and interest; and the 'Lackawanna Valley' soon became a well-known and sufficiently defined region; one of large dimensions, extending along what had become known as the Lackawanna River to its junction with the Susquehanna.¹ In 1825 the Delaware and Hudson Canal Company purchased coal lands in this region, and in order to mine and bring the coal there to market, constructed at great expense a canal from Rondout, on the Hudson, to Honesdale, in Pennsylvania, a distance of one hundred and eight miles, and a railroad thence to their coal mines, which they had since maintained, for the purpose of bringing their coal to market. This transport they began to make in 1828, and had ever since been engaged in taking out coal and in carrying it to the Hudson River and to the markets of the country; gradually increasing their annual productions. In the first year they produced 720 tons, in the second year 43,000 tons, and in 1866 1,300,000 tons.

The coal coming from the Lackawanna Valley, and it being impossible for ordinary persons by mere inspection to distinguish it from that mined elsewhere, it naturally got, or artificially had given to it, at the commencement of the company's business, the name 'Lackawanna coal;' and by this name it had been generally afterwards known and called in the market.

Although this coal came from a section of country called both by geologists and the public the Lackawanna region, still the company were, without doubt, the first and for more than twenty years the only producers of coal from that region, and during all this time their coal had become favorably known in market by the name already mentioned.

In 1850, another company, the Pennsylvania Coal Company, began to mine coal from their mines situated in the same general region of country, and for the first two years the coal which they mined was partially prepared and brought to market by the Delaware and Hudson Canal Company, already named as the original operators, and sold under contract in common with their own; but, about 1852, when the Pennsylvania company began itself to bring its coal to market and to sell it, it got or had given to it the name of 'Pittston coal,' by which it was frequently or generally known and called, especially when specifically spoken of.

Afterwards, about 1856, a third company—the Delaware Lackawanna, and Western Railroad Company—began to mine coal from mines which they owned, situated in other parts of the same section of country, and to distinguish it from that of other producers, their coal got or had given to it the name of 'Scranton coal,' by which it had since been frequently or generally known and called, especially when meant to be particularly referred to.

Coals from other parts of the same region got or had given to them distinctive names; such as Lehigh coal, Hazelton coal, Spring Mountain coal, Sugarloaf coal, &c., and in like manner coals from the Schuylkill region acquired or had given to them distinctive names by which the same were known more particularly in the market.

With all this, however, all the varieties coming, as in effect they did, from the same great veins or strata, were not unfrequently of later times spoken of by the trade, when speaking generally, as being Lackawanna coal; and under the general heading of statistics relating to coal would be spoken of in like generic terms.

The original Lackawanna was asserted by those interested in its sale to be better prepared than either of the others. From this circumstance or from some other it was esteemed and commanded, with a class of purchasers, a higher price than either the Scranton or Pittston.

The canal company had a market for their Lackawanna coal in the City and State of New York, and also in the cities and towns of the Eastern States, and, amongst others, at Providence, R. I., where they had for many years sold annually large quantities by the name of 'Lackawanna coal,' by which it had been favorably known.

In this state of things, one Clark, a dealer in coals, at Providence, advertised in the newspapers published in that city and otherwise, that he kept on hand, for sale cheap, large quantities of 'Lackawanna coal,' and in this way, and by that name had sold many tons of the Pittston and Scranton coals annually. It was admitted that he did not have any of the canal company's coal that is to say, the original Lackawanna—for sale.

Hereupon the Delaware and Hudson Canal Company filed their bill against Clark, to enjoin his calling the coal which he sold 'Lackawanna coal.' The bill averred that about the time the canal company commenced their operations, they sought out, devised, and adopted the name 'Lackawanna coal' as a special, particular, and distinctive name or trade-mark, by which their coal might be introduced to dealers as the product of their mines in distinction from the coal of other producers, and that prior to their adoption of the word Lackawanna it had never been adopted or used in combination with the word 'coal' as a name or trade-mark for any kind of coal. Their bill also averred that ever since their adoption of the name their coal has been called and known in the market as 'Lackawanna coal,' and by no other name.

The defendant, it was admitted, had none of the complainant's 'Lackawanna coal' for sale, but dealt in coals from another part of the Valley; sorts which when specifically distinguished, as they constantly were, were distinguished by the name of 'Scranton coal,' and 'Pittston coal;' coals having the same general appearance as the complainant's 'Lackawanna coal,' and which the bill alleged could not be easily distinguished therefrom by inspection.

The answer denied that the name 'Lackawanna coal' was, or ever had been, the peculiar property and trade-mark of the complainants, or of benefit to them as establishing the identity of the coal. It admitted that the defendant kept coal for sale, and that he did not purchase or keep for sale any of the company's Lackawanna coal, and that he dealt almost exclusively in coal mentioned in the bill as Scranton and Pittston coal, and that the two varieties were of the same general appearance as the coal of the complainants. It denied, however, that those varieties of coal were known by the names just mentioned, exclusively, or were of a less good quality than the coal of the complainants, and averred the contrary; affirming that they were equally Lackawanna coal, and known by that name, as the evidence tended to show that generically they were.

The court below dismissed the bill, and from that decree the Delaware and Hudson Canal Company appealed. The leading question presented by the appeal being whether the complainants had an exclusive right to the use of the words 'Lackawanna coal,' as a distinctive name or trade-mark for the coal mined by them, and transported over their railroad and canal to market; there being also some other points not necessary to be here stated.

The case was fully and remarkable well argued on both sides, and with a nice analysis of authorities.

Messrs. E. H. Owen and S. P. Nash, for the plaintiffs in error:

It cannot be doubted as a fact that the defendant advertises his coal as 'Lackawanna coal,' for the purpose of inducing the public to believe that it is in fact the coal produced and sold by the canal company, and with the intention of supplanting the company in the good will of its trade. This is a fraud upon the public, and a fraud also upon the company suing; depriving them of the benefit of any right they have in the word Lackawanna, as a trade-mark.

Now, the canal company has a valid title to the use of the word Lackawanna as a trade-mark. They were the first to adopt and impose upon it the office of becoming and being thereafter the name for their coal; so adopting and appropriating it as early as 1828, at the commencement of their business. The first coal which they brought to market was called and sold by the name of Lackawanna coal, and all the coal which they have hitherto brought to market has been sold and dealt in by that name and by none other. By such original appropriation of the word 'Lackawanna,' they acquired a title thereto, and the right to its exclusive use in combination with the word 'coal,' and thereupon and thereafter, by the continued use thereof, the new compound word 'Lackawanna coal' became, and was, and is, the name and trade-mark for their coal, not limited by territorial bounds.²

It is not necessary that a word which may be adopted as a name and trade-mark should be a new creation never before known or used, to entitle it...