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LEVY et at v. WAlTT et at. (Olrcult OoU1't of Appeals, FIrst Olrcult. May 15, 1894.) No. 81. 1)uDE-MARltS-AcQUIS1'l'iOl'f__OCOUPATION OF MARKET.
Oomplainants applied a name, widely known by reason of local geographical uses, to sroatl lots of cigars manufactured and sold by tbem,oneJn1878, on a sJ;lepial order; one In 1884, in competition with a trademar]{ for a limited market; One In 1885; and no more until 1889. Before the sale In 1885,defendants, witbout knowledge of what bad been done by complainants, and in good faith, began the sale of cigars of their own manufacture under tbe same name, and continued extensive sales and advertisements thereof for five years without question. Held, that there was no such appropriation or actual occupation of the market by cotpplainants as to entitle them to'assert a right to a trade-mark, as against defendants.. 56 Fed. 1016, affirmed.
Appeal from the, Oircuit Oourt of. the United States for the District .0t.Massachusetts. Levy an,d others, constituting the firm 'l'his .}Vasa suit by of Ler.r::Bros., against Henry Waitt and others,. constituting. the firm ot "\Vaitt Bond,jo restrain the alleged infringeD;lent of the trade,m,ark ."Blackstone,". as applied to cigars. The bill was dismissed. 56 Fed. 1016. Complainants appealed. Geol.'ge L. Huntress (Morris S. Wise, on the brief), for appellants. Payson E. Tucker and. George O. Abbott, for appellees. Before PUTNAM, Circuit Judge, and :NELSON and WEBB, District Judges, PUT:N'AM, Oircuit.Judge. The Reverend Mr. Blaxton,or Blackston, name which has becm;ne a favodte one for local geographical uses. A well-known street in Boston, on which two of the parties na!lled in the controversy .this case conducted their business; a river,. partly in Massachusetts and partly in Rhode Island (not of the. first order, but so lined with manufactories and villages that it is well known throughout the 'United States); a canal following the line of that river (now almost a tradition, but formerly as well known ,as the river itself); a considerable town in the former state; and many local corporations,-bear the namt;! of "Blackstone!' From the best view of the facts of this case which could be taken for all, A. P. Holley & Son, Waitt & Bond, the defendants below, and Levy Bros., the cOUlplainants below, each without the knowledge of the acts of the others, and contrary to the caution of the courts, usually disapproving of the use of widely-known geographical names as trade-marks, of which the last example of importance is. Mill Co. v. Alcoro, 150 U. S.460, 14 Sup. Ct. 151, adopted for cigars the word "Blackstone,"-,...A.P. Holley & Son, for the local market. lIt and about Woonsocket, in the state of Rhode Island; Waitt & Bond, originally for Boston and. the New England staltes; and Levy Bros., originally for New York and the west. It is not tq.e qourt to decide now whether, under the circumnecessary stances of rthis case, this use of a geograplllcal name for the several limited markets described could be protected by the law, as was
LEVY V. WAITT.
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done in Mouson v. Boehm, 26 Ch. Div. 398. Nor, in the view we take, need we consider the origin of the alleged rights of A. P. Holley & Son. Levy Bros. claim priority. In 1878 they manufactured, on a special order, 5,000 cigars, with some samples, applying to them the name in question. These were intended for one Thompson, who was then doing business on Blackstone street, in Boston, and who ordered the cigars either through A. R. Mitchell & Co., of Boston, or from them; A. R. Mitchell & Co. being then either the selling agents of Levy Bros., or the only parties at Boston to whom Levy Bros. made sales of their goods. It is claimed that on this occasion this use of the name was suggested by Thompson, and that it belonged to him, rather than to Levy Bros. Thompson did not accept the cigars, and they were soon after sold by A. R. Mitchell & Co., either on their own account, or on account of Levy Bros. In the view we take of the law of trade-marks, it is not necessary to determine either of the foregoing alternative propositions, some of which came under consideration in the important case of Paine v. Breweries (1893) 2 Ch. Div. 567. No further sales of any cigars with this name were made by Levy Bros. until 1884. They claim that in the interval they kept samples on hand; but, as the cigars were not actually put on the market during the intervening period, the court considers this inconsequential, under the rules which we will hereafter state. It is undisputed that A. P. Holley & Son sold cigars under the trade-mark of "Blackstone" as early as 1881, in and about Woonsocket; and in 1884 Levy Bros. sold, either to or through A. R. Mitchell & Co" a lot of 5,000 cigars, ordered by one Cook, who also lived at Woonsocket, undoubtedly for sale in competition with the cigars of A. P. Holley & Son and in their market. The rules which we will hereafter explain make it clear that the transaction of 1878 did not establish in Levy Bros. an exclusive right, against Waitt & Bond, to the trade-mark now in dispute, and that, as the sale of 1884 occurred after the long interval of six years, it had only the effect of an incipient transaction. Moreover, as it operated as a direct interference with the market of A. P. Rolley & Son, which had certainly been established as early as 1881, it was ineffectual for that reason, if for no other. Another lot of 5,000 cigars was manufactured during the same year (1884) by Levy Bros., intended for the same Cook, but they were not taken by him; and they remained in the hands of A. R. Mitchell & Co., undisposed of, until some time between the beginning of May, 1885, and the latter part of July, 1885, when they were sold by them. At the time of this sale, Waitt & Bond had already put on the market their own cigars with the name "Blackstone." Subsequent to the sale in 1884, Levy Bros. claim to have kept samples on hand, but as to. that claim we make the same observations which we have made with reference to the claim touching samples between 1878 and 1884. In April, 1885, Waitt & Bond, who were large manufacturers of cigars, doing business on Blackstone street, in Boston, put on the v.61F.no.l0·-64
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vol. 61.
'market cigars of, thefr own mahufacture, with the name "Blackstone," in ignorance of what had been' prel'"iously done by Levy Bros. touching the same name, and in good faith.. This was not a mere experiment on the part of Waitt & Bond, but was continuously followed by extElnsivesales and extensive advertisements, the sales amounting in 1885 to 4:12,142 cigai'$; in 1886, to 1,151,252; in 1887, to 1,488,136; in 1888, to 2,731,560; in 1889, to 5,386,096; in 1890, to 8,291,366., As already stated, their market was in Boston and New England. In 1889, Levy Bros. commenced the continuous manufacture and ,sale of cigars under this name, and have manufactured and sold the same from that time to the present in very cousiderable amounts, mainly in New York and the west. Their bill ill tl1,e present case was filed November 12, 1890, and contains the fOllowing allegations: ' "And: iP,e complalnantB say that, until they found a market for their said genuine Blackstone' cigars in the city of Boston, the complainants had never known or heard of a cigar other than their own being sold under the and known as, the 'Blackstone Cigar;' but in the summer of 1889 the learned fltr the first time that a cigar purporting to' be made bt 't\1j;) 'defendants was being sold throughout New England, and partlcularlyln the city of Boston, under the name of, and known as, the 'Blackstone'Cigar,' Thereupon,' ,the complainants at once caused an investigation to be madEl,: and found, and therefore charge, that SUbsequent to the adoption by the of the .name or mark, of 'Blackstone Cigars,' .. etc. & Bond,s letter, whitlh, with the correspondence which followed,
The record showl! that on July 26, 1889, Levy Bros. 'Wrote Waitt
would M sufficient, if their rights were in other respects perfect, to lay acIaim as of that date. On tb:elM!st theory of the facts for the complainants; the case stands as follows: In 1878 complainants manufactured and sold one lot of 5,000 cigars, and some samples; under the name in question; in 1884, another lot of 5,000; another lot in 1885, after Waitt & Bond commettMd the manufaetureand sale under the same name; and nOI1lOre; proved to the satisfaction of the court, until 1889. l.feanwhile, in April, 1885, Waitt & Bond commenced the sale and manu'facture under the name in question, and carried on the same continuouslyand extensively, as already explaineq. If there was any 'Suggestion that Waitt & Bond knew the facts as shown by Levy Bros., and had surreptitiously made use of a name which they were well awal'eLevy Bros. claimed as their own, although they had not put it on the market, except as stated, there might be some ground for an equity against Waitt & Bond; but we believe no case can be found where, with intermittent offers of merchandise bearing a certain na.nie, With such long lapses on the one sIde, and on the other the uninterrupted and innocent use of the same name for five years without :qhelJtion, and a consequent growth of an extensive and . valuable business, the eqUity courts have interfered in favor of the former agtl1inst the latter. The extensive dealings of Levy Bros., together with the fact of their relations with A. R. l.fitchell & Co., whatever they were, making, through all these years, la:rge sales of the cigars of Levy Bros. in the city of Boston, raise such a violent
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presumption against Levy Bros. as to the probability of their knowledge of the course of trade of Waitt & Bond touching this cigar as renders it difficult for this court to accept as true the claim that Levy Bros. were ignorant thereof, and did not acquiesce in it. However, we do not intend to rest this case on mere presumptions, on the doctrine of laches, or on that of abandonment, which latter was so fully argued. We rest it on the conclusion that Levy Bros. never acquired any right, sufficient to enable _ them to assert it to the detriment of anyone using the name "Blackstone" under the circumstances, and at the time, under and at which it has been used by Waitt & Bond. It seems to have been assumed in the discussions of this case that the common-law right to a trade-mark comes more from selection or discovery than from actual occupation of the market. Browne on Trade-Marks, at various points, is relied on; and, among other expressions found therein, the following, in section 52, is stated as though it constituted the whole rule, and required no limitation: "That is, how long does It take to adopt The answer is obviously this: The moment one who has selected a symbol to indicate his merchandise applies the mark to his goods, the act is complete. The avowal of his intention to adopt, his registration of the mark, and notice to the whole world, do not constitute adoption; but apply the mark to the articles for sale, and, eo instantl, the act Is complete."
It may be that, according to the letter of this citation, the selection of the name "Blackstone," with a single sale, would been sufficient to confirm in Levy Bros. the -exclusive right to its use; and this independently of all questions which might arise from the fact that A. P. Holley & Son, Waitt & Bond, and Levy Bros. were practically occupying different markets. But this is not the law. The right to a trade-mark at common law must not be confused, as it too frequently is, with the prima facie right existing under registration statutes. It arises to such a limited extent from the mere matter of selection or discovery of the name or symbol used that this may be of trivial consequence. A singular illustration of this fact is found in Siegert v. Findlater, 7 Ch. Div. 801, where, as applied to Dr. Siegert's bitters, the word "Angostura," indicating the place of their origin, was not selected by him as his trade-mark, but, instead thereof, the words "Aromatic Bitters," to which he added a statement that the bitters were prepared by him at Angostura. The public, however, applied to them the words "Angostura Bitters;" so that, by the act of the public, those words became the usual designation of the article, which the court protected in the case referred to. In the well-known Trade-Mark Cases, 100 U. S. 82, in which the court held the first trade-mark registration statute to be unconstitutional, it said (page 94): "The ordinary trade-mark has no necessary relation to Invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. It Is often the result of accident rather than design," etc.
Other positive expressions follow on the same page. The opinion of Vice Chancellor Sir W. Page Wood, in Collins Co. v. Brown, 3 K. & J. 423, isa very go.d compendium of the
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So far 4lfthe case the principles and words (page 427):
"The. simple question in, these cases is, has the plaintift, by the appropriatIon oia pa,rticular mark, fixed in the market where his goods are sold a conviction that the goods sO marked were manufactured by him; and if so, and if no one else' has been in the habit of using that mark, another man has not the right to use that mark,so as to commit the fJ;audulent act of palming off his own good,sas being the goods of the person who is known to have been in the habit of 'using it." ,
Many authorities could be cited, illustrating and approving these rules, ,and with them the principle that it is a fundamental basis of a right of action for the violation of a trade-mark that the public has been defrauded, or may be. It is frequently said that private rights in a tr.ade-mark are. only incidental to the prevelltion of public fraud. "This peculiarly illustrates the force of the truth that, prior,to the use of thenume "Blackstone" by Waitt & Bond, Levy Bros. had neither made any appropriation, nor fixed in the market any conviction on the part of the public, within the terms of the citation from Vice Chancellor Wood,-especially, not to such an extent that there was any possibility of the public being defrauded by others' use of the name. Of course, we do not determine whether, if there had been by one person a willful use of a name which had been in good faith selected by another, and experimentally put on'the market, or even put on the market at long intervals, as in the case at bar, equity would not interfere,or what, under the other cii'cumstances of this case, would have been the result, if the sales by Waitt & Bond had only experimental; but as against innocent parties, who have, through a period of years, built up an extensive business, it is clear that Levy Bros. had not, on any view of the facts, brought themselves within the law. It is therefore plain tIu1t the conclusions of the circuit court were correct. The .8.ecree of the circuit court is affirmed.
= THE CITY OF NAPLES. EUSTROM v. THE CITY OF NAPLES(DIstrIct Court, D. Minnesota, Fifth DIvision. June 9, 1894.) SHIPPING-PERSONAL INJURIES-NEGLIGENOE-GRAIN INSPEOTORS.
Libelant, who was a deputy grain inspector of the state of Minnesota, went upon respondent's vessel to inspect it, as required by law, and whHe so engaged he fell through an open hatchway, and was injured. The vessel, could not obtain a cargo of grain until It was Ip.spected and given a certificate that it was In condition to carry graIn safely, and thIs fact was known to the master. Held, that the inspectioIl' was for the benefit of the vessel, and hence such a relation existed between libelant and the vessel that It Is liable for Injuries to hIm caused by the negligence of those in charge of it.
TWs, was a "libel by.;Ossian Eustrom, a deputy grain inspector, against the, steam,er City of Naples,for qamages ,'for injuries reo eeived' by falling through an open hatchway.