John T. Dyer Quarry Co. v. Schuylkill Stone Co.

• Citation: 185 F. 557
• Parties: JOHN T. DYER QUARRY CO. v. SCHUYLKILL STONE CO.
• Decision Date: 06 March 1911
• Court: U.S. District Court — District of New Jersey

185 F. 557

JOHN T. DYER QUARRY CO. v. SCHUYLKILL STONE CO.

United States Circuit Court, D. New Jersey.

March 6, 1911

(Additional Syllabus by Editorial Staff.)

Frank P. Prichard, for defendant.

BRADFORD District Judge.

The John T. Dyer Quarry Company, a corporation of Pennsylvania has filed a bill in equity against the Schuylkill Stone Company, a corporation of New Jersey, alleging trade-mark infringement and unfair competition in trade, and praying for an injunction and an account. It appears from the record that in 1893 John T. Dyer established a stone quarry outside but within a mile of Birdsboro, Berks County, Pennsylvania, and there carried on the business of quarrying and crushing stone and selling the same. He continued to conduct this business until December, 1895, when it was transferred to The John T Dyer Company, which thereafter carried it on until December, 1900, when it was re-transferred to Dyer who thereupon transferred the same to the complainant, which has carried on the business since that time. The stone quarried, crushed and sold by the complainant is of igneous origin, commonly known as trap rock, and obtained from a dike of several miles in extent. It is largely used for macadamizing roads and paths. The first quarry opened in the above mentioned trap-dike was that of Dyer, and for some time, though the evidence does not clearly disclose how long, the stone there quarried was designated as 'Birdsboro Trap Rock' by affixing to the cars carrying the same labels bearing those words. Later the words 'Birdsboro Trappe Rock' were so used by Dyer and his successors in business including the complainant, until 1907 when the carrying companies objected to and prevented the further use of such labels on their cars. The complainant applied in June, 1907, to the United States patent office for the registration of the words 'Birdsboro Trappe Rock' as a trade-mark for quarried stone. The application was granted and those words were registered September 10, 1907, as a trade-mark of the complainant for such stone. In the summer of 1908 the defendant opened a quarry in the above mentioned trap-dike and since then has carried on the business of quarrying, crushing and selling trap rock. The crushed stone is sold by it, not as 'Birdsboro Trappe Rock,' but as 'Birdsboro Trap Rock.' The complainant contends that its exclusive rights as a trade-mark owner have been infringed by the defendant through such use of the words 'Birdsboro Trap Rock,' and further, that the defendant has by its use of those words been guilty of unfair competition in trade. The branch of the case relating to alleged trade-mark infringement will first be considered. It is not altogether clear from the pleadings whether, aside from alleged unfair competition in trade, the complainant bases its claim to relief wholly upon rights asserted under the words 'Birdsboro Trappe Rock' as a registered trade-mark or upon rights under not only those words but the words 'Birdsboro Trap Rock' as a common law trade-mark. While the bill gives prominence to the registered trade-mark and does not directly allege that the words 'Birdsboro Trap Rock' had ever been adopted or appropriated by the complainant, or any of its predecessors in the business of quarrying stone from the Birdsboro trap-dike, it is averred in paragraph XII that those words as applied to stone quarried and sold by it are its 'exclusive property,' and the injunctive prayer of the bill is not expressly and specifically limited to infringement of the registered mark, but is to the effect that the defendant be compelled to desist from 'infringing your orator's exclusive trade-mark rights. ' Further, there are diversity of citizenship between the parties and a prayer that the defendant be decreed to pay to the complainant $10,000 damages. Hence the jurisdictional requisites for a suit and for infringement of an unregistered common law trade-mark are satisfied. Aside from any question whether the words used respectively by the complainant and defendant have been so 'applied' or 'affixed' as to render infringement legally possible, it is evident that the defendant cannot be held liable in this suit as an infringer unless the complainant had a valid common law trade-mark consisting of the words 'Birdsboro Trap Rock' and an exclusive right to use those words in connection with stone quarried from the dike in question, or a valid registered trade-mark consisting of the words 'Birdsboro Trappe Rock' and a right to prevent the defendant from or hold it liable for using the words 'Birdsboro Trap Rock' as only colorably different from such registered trade-mark. Even on the assumption that, so far as trade-mark infringement is concerned, the complainant is confined by the pleadings to the assertion of whatever rights it may have under the registered mark, it is necessary to determine whether the words 'Birdsboro Trap Rock' were subject to valid appropriation as a common law trade-mark for stone quarried by the complainant or its predecessors from the Birdsboro dike. For if those words were not subject to appropriation, it will be found difficult, if not impossible, to recognize any right on the part of the complainant, through the mere substitution by its predecessors of the word 'Trappe' for 'Trap,' either with or without registration, to exclude the defendant from using precisely the words which were not susceptible of exclusive appropriation. On the above assumption if the words 'Birdsboro Trappe Rock' can be sustained as a valid registered or common law trade-mark the distinction between 'Trappe' and 'Trap' would be substantial and vital, and as the defendant has not used the word 'Trappe' it could not, as hereafter will more fully appear, be held as a trade-mark infringer through its use of the word 'Trap,' whatever significance such use, coupled with other circumstances, might have on the question of unfair competition in trade. I am satisfied that on the evidence neither the complainant nor its predecessors had or could have had a right to an exclusive use of the words 'Birdsboro Trap Rock' as a common law trade-mark in connection with stone quarried by it or them as above stated. Trap or trap rock has for many years and long before Dyer opened his quarry in 1893 been known to the public by that name, and its nature and uses thoroughly understood. Of towns of any considerable importance Birdsboro is nearest to the quarry of the complainant; and the words 'Birdsboro Trap Rock' were appropriately employed to designate trap quarried from the dike in question; the geographical name indicating the locality of the dike and the other words, geological and generic in their nature, denoting a natural product. That these words, originally sought to be appropriated by Dyer in connection with the quarrying, crushing and selling of trap rock, were, and were intended to be, a purely descriptive geological term coupled with a purely geographical term indicating the locality where the rock was found there can be no doubt. Johnson, the general superintendent of Dyer's quarries at and after the time they were opened, testified:

'XQ. 42. You say that after you discovered the quarry you and Mr. Dyer named it? A. Yes, sir. XQ. 43. How did you come to name it 'Birdsboro', had you ever heard of Birdsboro before? A. Did we ever hear of it? XQ. 44. Yes. A. I should think I did. * * * XQ. 47. You say that you had heard the word Birdsboro before. Where had you heard it? A. Passing through it, and knew the name of the town in Pennsylvania. XQ. 48. How did you come to name these quarries Birdsboro quarries? A. Well, the ridge ran right from Birdsboro to the quarries. XQ. 49. You wanted to indicate the place where the stone came from? A. Yes, sir.'

In selling the stone as 'Birdsboro Trap Rock' the words employed were not arbitrary or symbolical, but descriptive of the thing sold, pointing to its quality as dependent on locality, and containing a geographical designation of such locality, in the sense of referring, not exclusively to the precise point or points in the trap-dike from which the stone was then being quarried and sold, but generally to the dike from a portion of which stone was then being taken.

The use of the words 'Birdsboro Trap Rock' in connection with stone quarried by Dyer and his successors from the dike was not only natural, but most appropriate, as giving the common and well understood name of the rock, indicating to the public in an intelligible manner its location, and pointing to its quality as dependent upon or determined by locality. For it not only appears from the evidence but is a well-known fact of which the court in the absence of evidence on the point probably would take notice, that the quality and value of trap rock vary with the different dikes from which it is taken. And it is quite usual that the name of a town, river, valley or other physical feature, natural or artificial, is given to rock contained in or quarried from beds or deposits, whether within or contiguous to or only in the vicinity or such town, river, valley or physical feature. Carrara marble, Carthage marble, Cripple Creek rock, Barre granite, Marysville stone, Bergen Hill trap rock, Marietta sandstone, and Spring Mill stone, not to mention other instances disclosed in the evidence sufficiently serve as illustrations. Dyer and his successors in business including the complainant recognized in a practical way this common usage in the wording of their letter heads and advertising matter. Thus the following appears at the head of a letter written by Dyer in 1895:

'Howellville Blue Stone, Howellville, Chester Co., Pa. Birdsboro Trap Rock, Birdsboro, Berks Co., Pa. John T. Dyer, General Contractor. Crushed and Building

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