Coalgate Abstract Co. v. Coal County Abstract Co.

• Decision Date: 30 March 1937
• Docket Number: 26295.
• Citation: 67 P.2d 37,180 Okla. 8,1937 OK 202,33 U.S.P.Q. 285
• Parties: COALGATE ABSTRACT CO. et al. v. COAL COUNTY ABSTRACT CO.
• Court: Oklahoma Supreme Court

67 P.2d 37

180 Okla. 8, 1937 OK 202, 33 U.S.P.Q. 285

COALGATE ABSTRACT CO. et al. v. COAL COUNTY ABSTRACT CO.

No. 26295.

Supreme Court of Oklahoma

March 30, 1937

Rehearing Denied April 20, 1937.

Syllabus by the Court.

1. Geographical trade-names, terms, or words may not be exclusively appropriated by any user. This is the rule at common law and is statutory in Oklahoma. Section 11902 O.S.1931 (60 Okl.St.Ann. § 314).

2. But the use of geographical names or terms to palm off the goods of one manufacturer or vendor as those of another and to carry on unfair competition may be lawfully enjoined by a court of equity to the same extent as the use of any other terms or symbols.

3. Under the law of unfair competition, in order to enjoin the use of a trade-name there must be such a similarity to one formerly used or employed that the ordinary buyer, exercising ordinary intelligence and observation in business matters will certainly or probably be deceived. Mere possibility of deception and confusion is not sufficient.

4. The name the "Coalgate Abstract Company" is not so similar to the name the "Coal County Abstract Company" that the ordinary buyer, exercising ordinary intelligence and observation in business matters, is likely to be deceived, or likely to attempt to do business with the former company thinking that in fact it is the latter company.

Appeal from District Court, Coal County; Roy Paul, Judge.

Suit by the Coal County Abstract Company, T. P. Crim, Proprietor against the Coalgate Abstract Company and others. From a judgment for plaintiff, defendants appeal.

Reversed with directions.

G. C Abernathy, Edward Howell, and Kenneth Abernathy, all of Shawnee, for plaintiffs in error.

E. Moore, of Coalgate, for defendant in error.

PER CURIAM.

T. P Crim had been doing an abstract business in Coalgate, Coal County, under the name the Coal County Abstract Company, for seventeen years. This name had been used by him and his predecessors since 1907, a period of approximately twenty-eight years. In the year 1935, Martin Deister and Ernest Ward, who had theretofore owned and operated the Lewis Pottawatomie County Abstract Company, at Shawnee and Tecumseh, Okl., followed the oil business into Coal county and opened an abstract office in Coalgate, under the name of the Coalgate Abstract Company. The plaintiff below sought to enjoin the use of the name the Coalgate Abstract Company in the abstract business, on the ground that it constituted unfair competition because of a similarity in names between the Coalgate Abstract Company and the Coal County Abstract Company; plaintiff's contention being the usual one that the name was calculated to deceive and confuse the public and cause the plaintiff to lose its customers to the defendant.

It is needless to say that the law of trade-marks, trade-names, and unfair competition is considerably confused. It is difficult at times to reconcile and harmonize the decisions. We realize that there is some slight similarity in the two names. In cases of this sort, courts must be careful to protect the legitimate rights of the original user and at the same time give perfect freedom to a secondary user, if his claims are within the proper bounds.

Geographical names, terms, and words, as well as descriptive words, may not be exclusively appropriated. This is the unequivocal rule of the common law and is statutory in this state. Section 11902, O.S.1931 (60 Okl.St.Ann. § 314); Delaware, etc., Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581; Columbia Mill Co. v. Alcorn, 150 U.S. 460, 464, 14 S.Ct. 151, 37 L.Ed. 1144; Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 S.Ct. 625, 35 L.Ed. 247; Amoskeag Mfg. Co. v. Trainer, 101 U.S. 51, 25 L.Ed. 993; Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 9 S.Ct. 166, 32 L.Ed. 535; and Nebraska Loan & T. Company v. Nine, 27 Neb. 507, 43 N.W. 348, 20 Am.St.Rep. 686.

But the use of geographical names or terms to palm off the goods of one manufacturer, dealer, or vendor as those of another, and to carry on unfair competition, may be lawfully enjoined by a court of equity to the same extent as the use of any other terms or symbols. McLean v. Fleming, 96 U.S. 245, 24 L.Ed. 828; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 11 S.Ct. 396, 34 L.Ed. 997; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; Saxlehner v. Eisner, etc., Co., 179 U.S. 19, 21 S.Ct. 7, 45 L.Ed. 60; Pillsbury-Washburn Flour-Mills Co. v. Eagle, 86 F. 608, 30 C.C.A. 386, 58 U.S.App. 490, 41 L.R.A. 162; Carlsbad v. Kutnow, 71 F. 167, 18 C.C.A. 24, 35 U.S. App. 750; Block v. Standard Distilling, etc., Co. (C.C.) 95 F. 978; Meyer v. Dr. B.L. Bull Vegetable Medicine Co., 58 F. 884, 7 C.C.A. 558, 18 U.S.App. 372; Buzby v. Davis (C.C.A.) 150 F. 275, 10 Ann.Cas. 68; Shaver v. Heller & Merz Co. (C.C.A.) 108 F. 821, 65 L.R.A. 878.

In the case of Dyment v. Lewis, 144 Iowa, 509, 123 N.W. 244, 245, 26 L.R.A. (N.S.) 73, the Supreme Court of Iowa, in dealing with the use of geographic names and the subject of unfair competition in connection therewith, said: "Appellant has a large number of decisions to the effect that one is not entitled to protection in the use of a trade-mark which is purely descriptive of his business or of this in connection with the locality where conducted. Whatever may be the law with reference to trade-marks, this is not the unvarying rule applied in cases of unfair competition. The distinction between the law of trade-marks and that of unfair competition is pointed out in Sartor v. Schaden, 125 Iowa, 696, 101 N.W. 511, where the latter is said to be bottomed on the principle of common business integrity and to proceed on the theory that: 'While a primary and common use of a word or phrase may not be exclusively appropriated, there may be a secondary meaning or construction which will belong to the person who has developed it. In the secondary meaning there may be a property right. * * * Consequently unfair competition is distinguished from trade-mark cases in this: That it does not necessarily involve the question of the exclusive right of another to use the name, symbol, or device. A word may not be capable of becoming an arbitrary trade-mark, and yet there may be an unfair use of the word which will constitute unfair trade. The whole doctrine is based upon the theory of protection to the public whose rights are infringed or jeopardized by confusion of goods produced by unfair methods of trade, as well as upon the right of the complainant to enjoy the good will of a trade built up through his efforts and sought to be taken from him by unfair methods.' One using the ordinary name of a commodity, business, or occupation in connection with the name of a locality will not always be entitled to protection. This necessarily depends on circumstances."

The Supreme Court of Rhode Island, in distinguishing between infringement of trade-marks and unfair use of trade-names, in the case of Cady v. Schultz, 19 R.I. 193, 32 A. 915 916, 29 L.R.A. 524, 61 Am.St.Rep. 763, said: "A trade-name is of a different character. It is descriptive of the manufacturer or dealer himself as much as his own name is, and frequently, like the names of business corporations, includes the name of the place where the business is located. If attached to goods, it is designed to say plainly what a trade-mark only indicates by association and use. The employment of such a name is subject to the same rules which apply to the use of one's own name of birth or baptism. Two persons may bear the same name, and each may use it in his business, but not so as to deceive the public and induce customers to mistake one for the other. The use of one's own name is...