The Delaware and Hudson Canal Company v. Clark. THE PRESIDENT, MANAGERS, AND COMPANY OF THE DELAWARE AND HUDSON CANAL COMPANY vs. HENRY C. CLARK. IN EQUITY. The plaintiffs, being coal-miners, claimed the exclusive right to use the words "Lackawanna coal" as a name or trade-mark for coal, and brought this suit to enjoin the defendant from using those words to designate coal sold by him which was not mined by the plaintiffs: Held, that the plaintiffs, by their acts of acquiescence in the use of those words by the defendant to designate coal sold by him which had not been mined by the plaintiffs, had licensed the defendant to use those words to designate the coal sold by him, and were equitably estopped from enjoining the defendant from using those words for such purpose. The basis of the action of a Court of equity to restrain the infringement of the right to a trade-mark, is fraud on the part of the defendant. (Before BLATCHFORD, J., Southern District of New York, January 5th, 1870.) THIS was a final hearing, on pleadings and proofs. Edward H. Owen and Stephen P. Nash, for the plaintiffs. William Fullerton and Erastus B .Rudd, for the defendant. BLATCHFORD, J. The plaintiffs are a corporation created by the State of New York. The defendant is, and has been for twenty-nine years, a dealer in coal, carrying on business at Providence, in the State of Rhode Island, and having yards there where he stores, and from which he sells, coal. The plaintiffs own and operate a canal, from Rondout, on the Hudson River, to Honesdale, in the State of Pennsylvania, and a railroad from Honesdale to lands in that State which they own, and from which they have, for many years past, been mining coal, which they have afterwards sent to market on The Delaware and Hudson Canal Company v. Clark. said railroad and said canal. They assert, in their bill, which was filed January 2d, 1867, that they have a title to the name of "Lackawanna coal," as a special, particular, and distinctive name or trade-mark for their coal, the product of their mines, in distinction from the coal of other parties; that, for a number of years past, they have sold and consigned, and still continue to sell and consign, large quantities of the said "Lackawanna coal" for sale and consumption in Providence aforesaid, and in its vicinity; that certain dealers in Providence keep on hand for sale, and advertise and sell, the plaintiffs' coal under the aforesaid name of " Lackawanna coal;" that the defendant has carried on and still carries on, at Providence, the business of a coal merchant or dealer in coal, and for that purpose owns and occupies a yard in which he keeps anthracite coal for sale; that he does not purchase, keep, or have for sale any of the plaintiffs' "Lackawanna coal," but exclusively buys, sells and deals in other and different kinds of anthracite coal, which have been named by the producers thereof, and are generally called and known by the names of, "Scranton coal" and "Pittston coal," and are produced by other and different companies; that the coal in which the defendant deals is of the same general appearance as the plaintiffs' "Lackawanna coal;" that the defendant has been wrongfully and fraudulently selling and offering for sale his aforesaid Scranton and Pittston coal by the name of, and as, and for, "Lackawanna coal," and, to carry out and effect such fraud and deception, has erected, or caused to be erected, and has, a sign upon or at his coal yard, whereon is painted or inscribed the name "Lackawanna coal," thereby falsely and fraudulently representing, and designing and intending to have the public to understand and believe, that he keeps and has for sale the plaintiffs' "Lackawanna coal;" that, in order further to carry out his aforesaid false and fraudulent designs and intentions, and to injure the plaintiffs in the sale of their aforesaid coal, he has falsely advertised, and continues to advertise, in the public newspapers printed in the city of Providence, that he has for sale "Lackawanna coal," whereas, VOL. VII.-8 The Delaware and Hudson Canal Company v. Clark, in truth and in fact, he has not any of such coal; that he has been and is selling and offering to sell his said coal as and for the "Lackawanna coal" of the plaintiffs; that he is, in these ways, pirating, and wrongfully and fraudulently using, the plaintiffs' aforesaid name or trade-mark, and thereby injuring them in the sale of their "Lackawanna coal," and deceiving the public; that, as an excuse for such wrongful and fraudulent acts, he gives out and pretends, that his coal comes from a region of country in the State of Pennsylvania, known as the Lackawanna region or valley, and that, therefore, he is entitled to advertise and sell his coal by the name of "Lackawanna coal;" that his coal is sold and delivered to him by the original producers thereof, under their distinctive trade-marks or names of "Pittston coal" and "Scranton coal," so given given to it by the producers thereof, and that the greater portion thereof, if not all, is taken from the valley or region more properly known as the Wyoming Valley; that, when the word "Lackawanna" was adopted by the plaintiffs as their trade-mark as aforesaid, it had never been used or combined with the word "coal," so as to form the compound word or term "Lackawanna coal," and that it has not, at any time since, been so used by any producer of coal except the plaintiffs; that, so far as respects the use of the word, as applied to coal, the plaintiffs have a prior and exclusive right thereto, in which they should be protected; that the use of the plaintiffs' aforesaid trade-mark or name by the defendant is fraudulent, and is used with the design to obtain for his coal the reputation and credit due to, and possessed by, the plaintiffs' coal, and to injure the plaintiffs in the premises; and that the plaintiffs have never, in any manner, authorized the defendant to use or apply such name to his coal, nor, in any wise, acquiesced in his use thereof. The prayer of the bill is, that the defendant, and his agents, may be enjoined and restrained from keeping or using a sign over, or upon, or about his coal-yard, or place of business, with the words "Lackawanna coal," or "Lackawanna," painted or inscribed thereon, and from advertising "Lackawanna coal" for sale, and from selling, or offering or attempt The Delaware and Hudson Canal Company v. Clark. ing to sell, his aforesaid coal or any coal which does not come from the plaintiffs' mines, under or by the name of "Lackawanna coal," and that he may account for or pay to the plaintiffs whatever profits he may have realized from the use of the plaintiffs' name or trade-mark, and from the sale of his coal under or by the name of "Lackawanna coal." The answer, which was filed on the 11th of April, 1867, denies that the name of "Lackawanna coal ", ever has been, or now is, either in the city of Providence and vicinity, or elsewhere, the peculiar property and trade-mark of the plaintiffs. It admits that the defendant has been, and still is, engaged in business as a dealer in coal in Providence, and occupies a yard in which he keeps anthracite coal for sale, and does not purchase or keep for sale any of the plaintiffs' "Lackawanna coal," and deals almost exclusively in the varieties of coal mentioned in the bill by the names of Scranton coal and Pittston coal. It denies that the said varieties of coal are exclusively known by those names, and avers that they are generally known by the name of "Lackawanna coal," and are so regarded and so styled by dealers in coal and the public generally. It admits that the defendant is advertising and selling the two varieties of coal mentioned in the bill as Scranton coal and Pittston coal, by the name of, and as, and for, "Lackawanna coal;" and that he has a sign upon his yard, whereon is inscribed the name "Lackawanna coal." It avers that said sign, "Lackawanna coal," has been upon his said premises during the last seven or eight years; that, during the greater part of said period, the premises adjoining the said coal-yard of the defendant have been used and occupied by the plaintiffs, or by persons in their employment and interest, for the purpose of selling their coal; that, during said period, he has advertised and sold large quantities of the said two varieties of coal mentioned in the bill as Pittston coal and Scranton coal, under and by the name of "Lackawanna coal;" that, during the whole of the above period, and for a considerable number of years previous thereto, he had not purchased any of the coal of the plaintiffs, or offered any of The Delaware and Hudson Canal Company v. Clark. the same for sale, as the plaintiffs well knew; that the plaintiffs, in January, 1860, issued a circular, in which they cautioned consumers of "Lackawanna coal" against coals not coming from their Company, and directed buyers to "ask for Lackawanna that comes directly from the Delaware and Hudson Canal Company ;" and that the plaintiffs never made any claim or pretence that they were entitled to the exclusive use of the name "Lackawanna coal," to the knowledge of the defendant, until a short time prior to the commencement of this action. It denies that the defendant has intended or practised any falsehood, fraud, or deceit, in advertising, offering for sale, or selling, any of the above-mentioned varieties of coal, either towards the plaintiffs, or any other person. It also denies that the plaintiffs have a prior or exclusive right, as respects the use of the word "Lackawanna," as applied to coal, and that they are entitled to any protection in respect thereto, and avers that, even if such prior right to said use of said word or term had existed, as to constitute a trade-mark, such right, and all claim to protection in reference to the same, have been wholly lost to the plaintiffs by their long continued abandonment of the same, and their acquiescence in the common and general use of said word or term by the coal trade and the public, as relating to, and being properly the designation of, all coals mined and produced in the Lackawanna valley. I have come to the conclusion that, upon established principles of equity jurisprudence, the bill in this case must be dismissed, on the ground that, whatever right or title the plaintiffs may have had, as against the defendant, to the exclusive use of the words "Lackawanna coal," as a trademark, their acts, in regard to his use of those words to designate coal sold by him which was not coal mined or put in market by the plaintiffs, have amounted to a license to him to use those words to designate Scranton coal and Pittston coal, and thus to an equitable estoppel against their claim to the relief prayed for by the bill. The defendant has been in the coal business at Providence since the year 1840, engaged |