Columbia Mill Co v. Alcorn

• Decision Date: 04 December 1893
• Docket Number: No. 115,115
• Citation: 14 S.Ct. 151,37 L.Ed. 1144,150 U.S. 460
• Parties: COLUMBIA MILL CO. v. ALCORN et al
• Court: U.S. Supreme Court

150 U.S. 460

14 S.Ct. 151

37 L.Ed. 1144

COLUMBIA MILL CO.

v ALCORN et al.

No. 115.

December 4, 1893.

P. H. Gunckle, for appellant.

Mr. Justice JACKSONdelivered the opinion of the court.

The complainant, a corporation or Minnesota, engaged in the manufacture of flour at Minneapolis, in that state, brought this bill to restrain the defendants from using the word 'Columbia' in a brand placed on flour sold by them.The complainant alleged that it had selected this word as a fanciful and arbitrary name or trade-mark at least five years prior to the filing of the bill, for the use and purpose of identifying a certain quality of flour of its own manufacture.The complainant's brand, printed on sacks, and stenciled on the heads of barrels, was in the form of a circle, in the upper arc of which were the words 'Columbia Mill Co.,' and in the lower arc, 'Minneapolis, Minn.'These words were printed in blue.On a horizonrtal line, and in the middle of the circle, was the alleged trade-mark, 'Columbia,' in large letters, which was printed in red.Below this word, on separate lines, and in smaller letters, were the words 'Roller Process' and 'Patent.'The bill also alleged that the brand of flour on which the trade-mark was affixed obtained an extensive sale, and became generally known throughout the country, but that in the years 1887 and 1888 purchasers and consumers thereof were misled and deceived by the defendants, who put up in similar packages an imitation of the flour manufactured by the complainant, which was thus sold by them under the name, brand, and trade-mark, 'Columbia.'It was further alleged that the flour thus sold, although inferior in quality to the complainant's article, caused a great diminution in the business of the complainant.The bill prayed for a injunction, and an accounting of the profits on all the flour sold by the defendants under the brand of 'Columbia.'

The defendants answered that they carried on in Philadelphia a general business of buying outright, and of selling on commission, flour consigned to them, and that, in accordance with the custom of the trade, they had their own brands put on the sacks and barrels of flour handled by them.They admit that one of the brands so used was in the form of a circle, having the words 'High Grade' in the upper arc, and under those words 'No. 1;' then, on the next line, 'Hard Wheat,' under which, in large letters, was the word 'Columbia,' and below that, in letters of the same size, was the word 'Patent,' and the figures '196' in another line below.On the lower arc of the circle were the words 'Minneapolis, Minn.'The answer stated that the whole of the brand was printed in black ink.The defendants further averred that 'they have never sold any flour not manufactured by the complainant as being the flour of the complainant; that they have not knowingly or actually used, or caused to be used, any brand for flour in imitation of any brand used by the complainant, nor have they ever sold any flour branded in imitation of complainant's flour; that they have never come in competition with complainant's flour, nor has any one ever purchased the respondent's flour, believing it to be of the complainant's manufacture; that they deny any claim on the part of the complainant to any right to the name 'Columbia' as a trade-mark, averring that the same was used by these respondents and other parties long before the said complainant commenced to use it, and that other mills beside the complainant's manufacture and sell flour branded 'Columbia."

Upon the pleadings and proofs, the court below held that the complainant had not established its exclusive right to the use of the word 'Columbia' in a brand for flour, and dismissed the bill.From this decree the present appeal is prosecuted.

We are clearly of opinion that there is no error in the judgment of the court below.The general principles of law applicable to trade-marks, and the conditions under which a party may establish an exclusive right to the use of a name or symbol, are well settled by the decisions of this court in the following cases: Canal Co. v. Clark, 13 Wall. 311;McLean v. Fleming, 96 U. S. 245;Manufacturing Co. v. Trainer, 101 U. S. 51;Goodyear India Rubber Glove Manuf'g Co. v. Goodyear Rubber Co., 128 U. S. 598, 9 Sup. Ct. 166;Corbin v. Gould, 133 U. S. 308, 10 Sup. Ct. 312;Lawrence Manuf'g Co. v. Tennessee Manuf'g Co., 138 U. S. 537, 11 Sup. Ct. 396;Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625.

These cases establish the following general propositions: That to acquire the right to the exclusive use of a name, device, or symbol as a trade-mark, it must appear that it was adopted for the purpose of identifying the origin or ownership of the article to which it is attached, or that such trade-mark must point distinctively, either by itself or by association, to the origin, manufacture, or ownership of the article on which it is stamped.It must be designed, as its primary object and purpose, to indicate the owner or producer of the commodity, and to distinguish it from like articles manufactured by others.(2) That if the device, mark, or symbol was adopted or placed upon the article for the purpose of identifying its class, grade, style, or quality, or for any purpose other than a reference to or indication of its ownership, it cannot be sustained as a valid trade-mark.(3) That the exclusive right to the use of the mark or device claimed as a trade-mark is founded on priority of appropriation; that is to say, the claimant of the trade-mark must have been the first to use or employ the same on like articles of production.(4) Such trade-mark cannot consist of words in common use as designating locality, section, or region of country.

The alleged trade-mark cannot, for many reasons, be made the subject of an exclusive private property: First, because it is clearly shown from the proof in the cause that the word 'Columbia,' as a brand upon sacks or barrels of flour, was in use long before its appropriation by the complainant.

It is established by the evidence that as early as 1865 or 1866 a brand was made for Lee & Hollingsworth, owners of the Columbia Mills of Brooklyn, N. Y., which was placed upon their sacks or barrels of flour in the form of circle.The upper part of the circle was formed of the words 'Columbia Mills.'In the middle of the circle,...