WEEKLY NOTES OF CASES. VOL. XXIV.] FRIDAY, NOV. 1, 1889. [No. 27. these two continued to operate this mine, trading as C. & Co., and calling their coal "Sonman Coal." A. and B. secured a lease of another mine which they operated calling the product of their mine also "Sonman Coal." A bill in equity having been filed by C. & Co. to restrain A. & Co. from using that name, it appeared that both mines were included in a large tract of over 6000 acres of land originally conveyed to one Aaron Sonman, and hence called the Sonman survey. In this survey there are different veins of coal having various local names. The coal in the different veins and at different places in the same vein varied in quality. There was some evidence that heretofore the coal January 31, 1889. taken from all these mines had been called "Sonman Coal." The word "Sonman" was commonly used as a word of geographical signification. A village had been built on the Sonman survey and called "Sonman," Supreme Court. Jan. '89, 87. Laughman's Appeal. Trade-marks-What are proper subjects of which had a railroad station, post-office, and telegraph Geographical names-Trade-names-Assignment of trade-marks-Coal mines-Trade-name applied to coal mined—“ Sonman coal.” office. Upon these facts, the Court below having granted an injunction restraining A. & Co. from designating their coal as "Sonman coal, on appeal : Held, (1) that C. as the assignee of A. and B., possessed the rights of the firm of A. & Co., in any tradeWhile every one is entitled to affix to the product of mark or trade-name which that firm may, at the time his own manufacture any symbol or device not pre- of its dissolution, have acquired, and with C.'s apviously appropriated, and to use the same as a trade-proval the new firm of C. & Co. were entitled to exermark, and to have his property in said trade-mark cise that right. protected from infringement by other parties, yet no property can be thus acquired in a word, mark, or device, used as a trade-mark, which denotes merely the nature, kind, or quality of an article, or, as against other persons carrying on trade therein, in the name of a country or a section of country. While a geographical name may perhaps in some cases, or under some circumstances, be used as a trademark, yet when the article to which it is applied is the product of the place named, the term cannot be used as a trade-mark by one to the exclusion of others, owners of like products of the same place. The trade-name of any natural product or other article of manufacture upon which a trade-mark cannot conveniently be affixed, though not strictly a trademark, is nevertheless a species of property in the use of which the owner is entitled to protection, and which may be the proper subject of assignment in the same manner as trade-marks. Trade-marks are the proper subject of assignment, to the extent at least, that unless reserved they pass with an assignment of business, and the assignment by one partner of all his interest in a firm to his copartners will carry with it the exclusive use of the trade-mark of the firm. Although a tract of coal land containing over 6000 acres of land may not clearly present the features, or be so extensive or so sharply defined in its natural boundaries as what is ordinarily termed an independent region, and although it may be doubtful whether it may be considered as a separate coal basin, or even as a sub-basin, yet if it is proved that it has received pro a distinct geographical recognition from the public, the name of the tract, when applied to its own natural ducts, must be taken in its geographical sense, and cannot be used as a trade-name by one coal operator to the exclusion of others mining coal in the same tract. A. and B. having leased a coal mine associated C. with them in the operation of the mine, trading as A. & Co., and adopting as a trade-name for the coal mined by them "Sonman Coal." Subsequently A. & Co. dissolved, A. and B. transferring their interest in the lease and firm to C. who associated D. with him, and (2) But, however, that neither A. & Co. nor C. & Co., nor any other parties operating the mines in the Sonman survey had the right to appropriate the name of "Sonman" to the exclusion of others similarly engaged; and therefore C. & Co. were not entitled to the injunction prayed for, and their bill should have been dismissed. Appeal of Daniel Laughman and J. Chester Wilson, trading as D. Laughman & Co., from a decree of the Common Pleas No. 3, of Philadelphia County, restraining them from the use of a trade-name. Bill in equity, wherein William H. Piper and John H. Lewars, trading as W. H. Piper & Co., were complainants, and Daniel Laughman and J. Chester Wilson, trading as D. Laughman & Co., were defendants. The case was referred to Charles F. Corson, Esq., as Examiner and Master, who found the facts as set forth at length in the opinion of the Supreme Court, infra. Upon the facts as found by him, and having quoted the rule laid down in Bispham's Equity (p. 511, § 457), that "the name of a country or section of a country cannot be appropriated as a trade-mark by the owner of a particular product (e. g., coal) of that country, so as to exclude owners of other similar products coming from the same country or section of country from using the name;" and referred to the of Canal Co. v. Clark (13 Wallace, 311); Wotherspoon v. Currie (L. R. 5 Engl. & Ir. App. 512; S. C. 18 Weekly Reporter, 564); Lochgelly Iron Co. v. L. Iron Co. (6 Ct. of Sessions Cases, 4th Series, p. 482); Day v. Brownrigg (L. R. 10 Ch. Div. 294); De Boulay v. De Boulay (L. R. 2 Privy C. App. 441); Glendon Iron Co. v. Uhler (25 P. F. Smith, 467), the Master continued: cases "The evidence of the defendants is wholly insufficient to sustain their contention of a prior use of the word as a trade-name, even if it could be found from the evidence that it had been used as a trade-name by the Whites from 1854 to 1859, or by Westbrook at a later period. The complainants might well have treated it as aban "From these cases may be deduced the reason | ler vein (being the vein worked by complainwhy a geographical name cannot be adopted as a ants), he says: If projected from the Sonman trade-name; and it is because the name has, so or south side to the north side, in which the deto speak, been already dedicated to the public, fendants' mine is situated, they would meet one and therefore is not susceptible of exclusive ap-another.' propriation by any one carrying on trade within the limits of the borough, town, region, or country described by the name, and because others may, with equal truth, use the same name; but these cases also show that it must be a section of country, a town or borough which is essentially of a public character and well known to the public at large, not merely known to a few per-doned. A trade-mark, whether it consist of symsons in the neighborhood, and that it is not every small section of country, every trifling collection of houses which may locally be known by a certain name, or even a large tract of land which is merely a private estate, which will bring the party using the name within the rule forbidding the use of a geographical name. Such names are not geographical in the sense referred to. bols or a descriptive name, may be abandoned, and, if it is, it may then be appropriated by any one who, by doing so, adopts it as his own. (Hegeman v. Hegeman, 8 Daly, 7; Brown on Trade-marks, title Abandonment,' sections 674 to 691.) In Blackwell v. Dibrell (3 Hughes, C. C. 151), the name used for eight years was held to work a forfeiture which could not be resumed in prejudice of one who used it exclusively during the period of abandonment." The Master further found that the rights of Dysart & Co. to use the word "Sonman" as a trade-mark had passed to Piper under their assignment. "The Lackawanna Valley,' The Lehigh Valley,' The Cumberland Valley,' are instances of geographical names which are within the rule; they are names descriptive of well-known regions of Pennsylvania, known to the public at large. "Tested, then, by these rules, is Sonman a The Master recommended, substantially, the geographical name? If so, the defendants can- following decree: (2) That the defendants, not be enjoined. (The Master then referred to Daniel Laughman and J. Chester Wilson, trading the testimony in detail, the more material por-as D. Laughman & Co., and each of them, and tions of which are recited in the opinion of the Supreme Court.) the servants, agents, and attorneys of them, and each of them, be perpetually enjoined from advertising, or selling, or offering to sell, the said coal mined by the said defendants, or any other coal under the name of "Sonman Coal." Nor does the Sonman tract itself present the features of an independent region. It is not a well-defined region like the Lackawanna Valley, referred to in Canal Co. v. Clark, with well-defined Exceptions filed to this report by the defendnatural boundaries separating it from adjoining ants were dismissed by the Court, and the above regions. These essentials are wanting; it is decree entered, whereupon the defendants took irregular and ill-defined, the lines crossing the this appeal, assigning for error the dismissal of Conemaugh five or six times. Ben's Creek flows their exceptions and the decree of the Court. through and Trout Run crosses it. Nor can it Joseph J. Knox and Wayne Mac Veagh (with be said to form an independent coal basin. In them George Tucker Bispham), for the appelthe geological divisions of the State, complain-lants. ants' mine is in what is termed the Allegheny Mountain District, and in the Wilmore sub-basin or the First Bituminous sub-basin. Rudolph M. Schick, for the appellees. October 7, 1889. THE COURT. The plain"Nor does the coal at Sonman or Ben's Creek tiffs, W. H. Piper & Co., are miners and shippresent the features of a sub-basin. This clearly pers of bituminous coal in Cambria County. appears from the testimony of Mr. Martin, who They are engaged in mining what is known on says, there are no inclinations of the measures the geological maps of the State as the Miller towards Ben's Creek; they are perfectly flat.' vein, at Ben's Creek, on the western slope of the And Mr. Brittain testified: 'I don't consider Allegheny Mountains; their mines are located that the plaintiffs' mine exhibited any of the fea- upon what was sometimes called the Big Survey, tures of a coal basin.' And Mr. Sanders, an ex-containing an area of about ten square miles, or perienced mining engineer, testified that it would be practicable to open a drift from Trout Run to Ben's Creek, which would drain itself; and Mr. Westbrook, a witness for defendants, substantially says the same thing. Speaking of the Mil over six thousand acres. This large body of land, it is said, was conveyed by William Penn directly to one Aaron Sonman, and hence has been generally known as the Sonman survey. From the testimony of Mr. Westbrook, it ap pears that in the Sonman tract there are several from the Clearfield region, the name "Sonman" seams or veins of coal, one above another. Mr. was adopted as a trade-name, and that name has Westbrook says: "The bottom vein is known as ever since been used and applied as the tradevein 'A;' a short distance above this is a small name of all the coal shipped from their mines; vein known as 'A primal;' the next higher vein that their coal is known and recognized in the is known as vein B,' and a few feet above this trade as "Sonman coal," and is thus distinguished is a smaller vein known as 'B primal;' the next from other kinds and qualities of bituminous coal is known as C,' and so on to E;' E' being in the market. The plaintiffs complain that the the highest upper workable vein. These are the defendants are infringing their right, by wrongdesignations given in geological surveys. These fully and fraudulently shipping an inferior coal several veins have other several local designa- under the same trade-name, and offering it for tions; they are known by miners in the neigh-sale as "Sonman coal," thus inducing dealers borhood by the name of the person who owned and consumers to suppose that the coal which them. The Lemon vein was so named because they buy from the defendants is the Sonman coal it was opened by John A. Lemon or his father. of the plaintiffs; whereby the public is deceived The Lemon vein is vein E,' and the Miller vein, and the reputation of the plaintiffs' coal is insaid to have been first opened by a man of that jured, etc. name, is vein B.' The coal mined from the same vein in different localities is not always of the same quality. The Miller vein, or vein B,' at Gallitzin, ten miles east of Sonman, is very much softer; while at South Fork, which is eight or ten miles from Sonman west, it is very much harder. In some cases, two or three miles makes a difference in the quality of the coal from the same vein." It is clear from the evidence, and the fact is found by the Master, that the coal taken from these mines has heretofore been spoken of and sold as "Sonman coal." Prior to 1874, however, the term "Sonman" would seem to have been applied, not as a trade-name, but merely as descriptive of the location of the mines. Mr. Alexander M. White, who mined the Lemon vein in 1852 or 1853, says: "We called it the In December, 1872, the Cambria Mining and Sonman coal in contradistinction to the Lily Mill Manufacturing Company, the owner of the Son- coal, which was mined east of it, between planes man survey, by an instrument of writing in the 3 and 4; this was a common appellation for it; form of a lease, granted to Dysart and Laugh- we called the coal from that survey Sonman coal." man, for a term of ten years, the right to mine, Hon. John Dean testifies, that there were about transport, and sell coal out of the Miller vein five thousand acres known to him as the Sonfrom a certain drift opened "nearly opposite a man lands; that the coal is called the Sonman point on Ben's Creek known as Ben's Hole." On coal, and that he always heard it called by that the 1st of January, 1874, Piper became a partner, name; and that it was a very common name as the business was conducted under the name of far back as 1854. Mr. Westbrook, who opened Dysart & Co.; and the firm commenced to mine the Miller vein and sold coal to the Altoona and ship coal in considerable quantities therefrom Manufacturing Company, to the Logan Iron and to market. On the 26th of July, 1879, the firm | Steel Works, to the Phoenix Iron Company, and of Dysart & Co., dissolved, Dysart and Laugh- to dealers, says: "I always called all coal mined man transferring their interest to Piper; the lease was afterwards extended, and Lewars became associated with Piper as a partner under the name of W. H. Piper & Co., the complainants in the bill. Upon the dissolution of the firm of Dysart & Co., Dysart and Laughman began operations upon another portion of the Souman tract, and were, and are now, engaged somewhat extensively in the mining and shipping of coal therefrom. and shipped Sonman coal, as designating the locality or region in which it was mined; sometimes, however, designating the coal by the name of the vein by which it is known." But the plaintiffs have introduced evidence to show that a short time after the 1st of January, 1874, they formally adopted the term "Sonman" as a trade-mark or name for their coal, and they now seek an injunction to restrain the use of that term by the defendants to any of their coal, even though the same be mined from the Sonman lands. The complainants in the bill allege that soon after the formation of the firm of Dysart & Co., The ownership of a trade-mark has, in genewhich was on the 1st of January, 1874, the firm ral, been considered as a right of property, and sought to select and establish a trade-name for equity will protect that right from infringetheir coal; that "Ben's Creek" and "Eureka" ment; proof of fraud is not required; the mere were at first suggested, and, upon due considera-violation of the right is sufficient to induce the tion, the latter name was adopted; but when it was afterwards discovered that this was an infringement upon the trade name of Berwind, White & Co., also miners and shippers of coal exercise of the equity powers of the courts. The trade-name of any natural product or other article of manufacture, upon which a trade-mark cannot conveniently be affixed, though not strictly a trade 66 mark, is, nevertheless, a species of property and But in the exercise of the right to establish a will, as a general rule, be protected in like man- trade-mark, there are certain limitations which ner. Trade-marks are the proper subject of as- must be observed. No property can be acquired signment, to the extent, at least, that unless re- in any word, mark, or device, which denotes served they pass with an assignment of business merely the nature, kind, or quality of an article. (Sebastian on Trade-marks, 236); and the assign- Thus, in Raggett v. Findlater (L. R. 17 Eq. 29), ment by one partner of all his interest in a firm an injunction to restrain the use of the words to his co-partners will carry with it the exclusive Nourishing Stout," which the plaintiff had use of the trade-mark of the firm. (Menendez v. previously used, was refused upon the ground Holt, 128 U. S. 514.) "As a distinct property, that" nourishing" was a mere English word deseparate from the article created by the original noting quality. "The owner of an original tradeproducer or manufacturer, it may not be the sub-mark has an undoubted right to be protected in ject of sale; but when the trade-mark is affixed the exclusive use of all the marks, forms, or symto articles manufactured at a particular establish- bols that are appropriated as designating the true ment and acquires a special reputation in con- origin or ownership of the article or fabric to nection with the place of manufacture, and that which they are affixed; but he has no right to establishment is transferred, either by contract or an exclusive use of any words, letters, figures, or operation of law, to others, the right to the use of symbols which have no relation to the origin or the trade-mark may be lawfully transferred with ownership of the goods, but are only meant to it. Its subsequent use by the person to whom indicate their name or quality. He has no right the establishment is transferred, is considered as to appropriate a sign or symbol which, from the only indicating that the goods to which it is affixed nature of the fact it is used to signify others are manufactured at the same place, and are of may employ with equal truth, and therefore have the same character as those to which the mark an equal right to employ, for the same purpose.' was attached by the original designer." Such is (The Amoskeag Manufacturing Company v. the appropriate language of Lord CRANSWORTH, Spear, 2 Sandf. S. C. 599.) in the case of Leathercloth Company v. The And whilst the office of a trade-mark is to American Leathercloth Company, in 11 Jur., N. indicate the personal origin or ownership of an S. 513; Kidd v. Johnson (100 U. S. 617). We article, yet a merely geographical name cannot assume, therefore, that W. H. Piper, as the assig-be so used (Bispham's Eq. sec. 457; Canal nee of Dysart and Laughman, possessed the rights Company v. Clark, 13 Wallace, 311). In the of the firm of Dysart & Co. in any trade-mark which that firm, at the time of its dissolution, may have acquired, and, with his approval, the new firm of W. H. Piper & Co. were certainly entitled to exercise that right. But we are not clear that either Dysart & Co., or W. H. Piper & Co., or any other parties operating the Sonman mines, had a right to appropriate the term "Sonman" to the exclusion of others similarly engaged. The object of a trade-mark is that the article, to which it is attached or belongs, may be distinguished from articles of a similar kind, and thus be known and identified in the market; its purpose is to indicate the personal origin of the article to which it is applied, or the source from which it comes. The office of a trade-mark is thus defined by Mr. Justice FIELD, in Manufacturing Co. v. Trainor (101 U. S. 53): "Every one is at liberty to affix to the product of his own manufacture any symbol or device not previously appropriated, which will distinguish it from articles of the same general nature, manufactured or sold by others, and thus secure to himself the benefits of increased sale by reason of any peculiar excellencies he may have given to it. The symbol or device thus becomes a sign to the public of the origin of the goods to which it is attached, and the assurance that they are the genuine article of the original producer." case last cited, it was held that the word " Lacka- In the case of Newman v. Alvord (49 Barb. 588), the plaintiffs manufactured a cement at Akron, N. Y., and sold it under the name of "Akron Cement." The defendants made the a store, a dwelling which he constructed for himsame sort of cement at Syracuse, and labelled it self, one for his superintendent, and six tenement "Onondaga Akron Cement." The Court held houses. The village was on the main line of the that: "Though all the world had a right to Pennsylvania Railroad, and although at first there manufacture cement at Akron and call it Akron was no station, a siding was constructed to facilCement, yet the action of the defendants, in itate the shipping of coal and lumber." calling their cement made at Syracuse, Akron Richard P. Westbrook testifies: "That in 1867 Cement, was a fraud on the plaintiffs and on the there was a settlement or village, consisting of public, and should accordingly be restrained." two large mansion houses, one 40 by 60, the To the same effect is our own case of Glendon other 30 by 40, a steam saw-mill, a store-house in Iron Co. v. Uhler (75 Pa. 467), where a corpo- which was kept a company store, two barns, one ration adopted the trade-mark "Glendon" upon of which was very large, a blacksmith shop, sevtheir iron; the place where their furnaces were eral tenements for workmen, and an iron siding located was afterwards erected into a borough by connecting the lumber yard with the Pennsylthe name of Glendon. Another company, en-vania Railroad. There were several other houses gaged in business in the same place, afterwards or tenements in different parts of the Sonman used the word "Glendon" on their iron, and it property. This village was known by the name was held that the second company was justified of Sonman. There was a post-office there at that in so doing. "The appellees," said this Court in time, kept in the store-house. James A. Shoethe case cited, "put upon their pigs the initials maker was the postmaster." He further testifies: of their firm and the name of their town. That"That a station was established at Sonman by name was Glendon to the whole world. It can- the Pennsylvania R. R. in 1871; the building not be that the previous appropriation by the was destroyed by fire. In the latter part of 1872 appellants of the word which now is the name of or the early part of 1873, the Pennsylvania R. the town, prevents any other manufacturer of pig R. Co. erected a permanent building there for iron within its limits from using the same word. ticket and freight purposes and appointed an agent. If it be so now, it may continue through all About the same time, a telegraph station was escoming time. The boundaries of the town may tablished there by the Western Union Company; be enlarged; the borough may grow into a city; both the railroad station and the telegraph station the manufacturers of pig iron may be multiplied, were called Sonman. There was a post-office and the word most expressive to indicate their called Sonman located there previous to 1857. location must be denied to all save one. So far A. F. Cantwell was postmaster in 1857. The as the authorities go to restrain a manufacturer office was continued by that name for more than from the adoption of a truthful trade-mark, we ten years; and when Shoemaker removed from will endeavor to enforce them; when asked to go Sonman, a man residing at Portage, one mile further we must decline. If the effect of the west, was appointed, and he removed the office incorporation of the appellants' district of coun- from Sonman to Portage." Mr. Martin says, in try into a town by the name of Glendon, has 1869 the saw-mill was gone; the post-office had been to deprive them of some of their former been removed to Portage, and some houses were rights, they must submit to the consequences.' vacant, but the mines were still in operation, and It is upon the same principle that every person continued to be in operation until the railroad may put his own name upon his own goods, not- and telegraph stations were established in 1872 withstanding another person of the same name or 1873 and ever since that time. may, in that name, manufacture and sell the same or a similar article. (Burgees v. Burgees 17 Eng. L. & E. 257.) It may be that the Sonman tract does not present the features of what the appellees call an independent region; that it is not so extensive Applying these principles to the case now or so sharply defined in its natural boundaries as under consideration, it seems clear that the plain- the Lackawanna Valley; it may be, also, that tiffs are not entitled to the exclusive use of the Sonman cannot be considered as a separate coal word "Sonman" as a trade-mark. It is clear, basin, or even as a sub-basin, yet it is plain that from the evidence, that Sonman is a word of it had received a distinct geographical recognition geographical signification; it denotes a specific from the public. These lands, for many years territory or region of country of considerable ex- prior to the time that the plaintiffs adopted their tent, which is and for many years both before trade-name, were, as we have seen, known as the and since the trade-name was adopted has been Sonman survey. Its boundaries were marked and devoted to the production of a somewhat peculiar defined upon the map of Cambria County; the vilquality of coal by different operators. In the lage erected thereon was Sonman; the post-office year 1854 the village of Sonman was built upon was Sonman; the railroad station was Sonman ; this tract. Mr. Alexander M. White testifies: the telegraph office was Sonman; the coal taken "That the village consisted of a steam saw-mill, from the mines was shipped as Sonman coal, and, |