642
88' FEDElt'A'L'RE'PORTBR.
. ."
W
This was the',vh:w which was taken bY' the court hi ,gemti;rrel-', t,t)' tile petition, the. demq.rrer w:aa, sustained, aM. ,a.: ·tor .the ijefewl . ant. The jUdgment ol the circuit eourt is affirme&
bonded. warehouse.
';TAA:i.¥*e
I
'ATWATER'et oJurt of
liE v; CASTNER et at' First,Circult. No. ,239. .
. ·(CI.. ,',
june 1, 1898.)
The word "Pocahontas'" ·ha\'ing been used by cbmplalnallt as a tradename for coal tor fully 2()years,with unbroken publiCi acquiescence, and such trade-qame having been sustained and its infringement enjoined by the circuit court of another circuit, held, that a preliminary injunction was properly granted In the present ease. It seems that if a manufacturer, producer, or dealer furnishes goods of such excellent quality, and builds up so extensive a trade, that his traqename becomes a distinctive appellation of the locality where his business. is pursued, he is not thereby prevented from having a trade-mark right in the ,
D.
SAME-GEOGRAPHICAL NAMES.
8.
SAME-PUBLIO ACQUIESCENCE.
Tha:t one person, other than complainant, shipped coal marked "Pocahontas Coal, from the Browning Mines," doeS not sllow an interruption of public acqUiescence in complainant's use of the name "Pocahontas," but rather, from the use of the qualifying worq.s, supports complainant's exclusive use of the unqualified words.
.
4. SAME-PRELIMINARY INJUNCTION-ApPEAL.
When an order granting a preliminary Injunction was clearly proper when made, it wUl not be reversed merely because the cirCUit court of appeals for another circuit, In a case in whiCh. the same party was complainant, has since held that the trade-mark cannot. be sustained. The rule as to the effect of a judgment on appeal, affirming an order tor a temporary Injunction, as stated in Davis Works v. Edison Electric Light Co., 8 C. C. A. 615, 621, 60 Fed. 276,282, repeated.
5.
PRELIMINARY INJUNCTION-AFFIRMANCE Ol\' ApPEAL.
of Massachusetts.
Appeal from the Circuit Court ot the United States for the District
Causten and James ,M. Morton, Jr., for appellants. Arthur v. Brlesen and He!1ry E. Everding, for appellees. Before PU'fNAM,Circuit Judge, and WEBB and BROWN, District Judges. " ,'J PUTNAM, Circuit Judge. This, is an appeaHr6m an order granting a temporary injunction-,and relates to an alleged trade-mark or trade-name, ''Pocahontas,'' used in the coal traffic. This has been used for fully 20 years,bythecemplainants below, 'and their predecessors in title, in a very! extensive trade, with unbroken publio acquiescence, until the controversy out of Which this litigation arose in this circuit and in the Fourthoircuit. It does not indicate.merelv that the complaillantsbelow are the producers of the coal sold, bu"t quite much that it is BOrted and put on the market under their
ATWATER V. CAST:\ER.
643,
implied representation of uniform quality andexcellellce. In addition to the public acquiescence of whlch we have spoken, there had been, prior to the injunction order fJ;'o,m,an adjudication, in the circuit court in the Fourth circuit, sust\lining the claimed trade-mark or trade-name, and enjoining its infringement. It is said that the complainants' coal, and also the alleged infringing coal, come from an extensive locality, now generally: known under the name of "Pocahontas"; and it is claimed that the case, therefore, falls within the rule of Canal Co. v. Clark, 13 Wall. 311, and Mill Co. v. Alcorn, 150 U. S. 460,14 Sup. Ct. 151. But, even if this were true in a general sense, it would remain to be whether the supreme court, in Singer Mfg. Co. v. June Mfg. Co., U. S. 169, 203, 204, 16 Sup. Ct. 1002, was not compelled to a qualification of the broad principle, claimed to have been stated in the cases;J referred to, as applied to trade-marks and trade-names which been long and extensively used, and have become widely recog-nizeil by the public at large, even when they might not have originated in accordance with the ordinary rules of law. In that case the court found that some qualification of the rule that a word which indicates quality cannot be protected as a trade·mark or trade-name is necessary, at least in some classes of cases; and there is ground for maintaining that this applies with the same necessity to trade-marks and trade·names which represent well-known localities as to those of the character of that in question in that case. We do not, however, find it necessary to decide, at present, whether or not an.Y qualification of that nature would be applicable to the case at bar, because so sharp a question does not now arise. Some of the reasons which render it necessary, under some circumstances, to protect, at least to a.qualified extent, a trade-mark of a geographical origin, were given by us in Levy v. Waitt, 10 C. C. A. 227, 61 Fed. 1008, 1012, 10 C. C. A. 227. The exact rule of Mill Co. v. Alcorn is implied in the following statement, at page 464, 150 U. S., and at page 152, 14 Sup. Ct.: "The word 'Columbia' is not the subject of exclusive appropriation, un<JE'r the general rule that a word or words, in common use as designating locality or section of a country, cannot be appropriated by anyone as his exclusive trade-mark."
This is explained in the same opinion, at page 465, by citing from Canal Co. v. Clark, ubi supra, the following expression: "The word 'Lackawanna' was not devised by the complainants. They found It a settled and known appellative of a district in "'hich their coal deposits and those of others were situated. At the time they bE'gan to use it, it was a recognized description of the region, and, of cOUl'se, of the earth and minerals In the region." .
It is necessary to recognize carefully the distinction which these expressions imply. Otherwise, a manufacturer, producer, or dealer, who furnishes goods of such excellent quality that they build up so extensive a trade as to give a distinctive nalUe to locality where it.is gursued, would be defeated of the just fruits of his and by the very fact of his own meritorious conduct. Therefore, ey;en ,under the rule as stated in .Mill,Co. v. Alcorn, ubi supra, and
644
88
FEDERAL REPORTER.
also to this court, involves a difficult question of fact,to the effect whether, at the time the trade-mark or trade-name inques1:ion was the word "Pocahontas" was in common use, 'as designating a known locality, or whether the locality gained its name from the complainants. Therefore the circuit court was not met with a pure question of law, but with a mixed question of law and fliet; and, by the well-settled principles touching the granting of temporary injunctions, the court was fully justified in its action by'the long and unbroken public acquiescence, without reference to the'adjudication in the Fourth circuit to which we have referred. The defendants below suggest that the acquiescence was not unbroken, as stated by us, because the affidavits show that there was one dealer, Browning, who shipped his coal as Pocahontas coal; but they show that all such coal was plainly tagged as follows: "Pocahontas Ooal, from the Browning Mines." This, so far from interrupting the public acquiescence'to which we have referred, supported it by an evident attempt on the part of Browning to bring within the rule stated in Singer Mfg. Co. v.June Mfg. Co. Since the granting of the injunction in the case before us by the court below, and since the appeal to this court and the arguments at bar on the appeal, the circuit court of appeals for the Fourth circuit, in Coffman v. Gastller (by all opinion passed down May 3, 1898) 87 Fed. 457, held that the claimed trade-mark or tradename, "Pocahontas," cannot be sustained, and has reversed the adjudication of the circuit court to which we have referred, and has remanded' the. cause to that court with instructions to dismiss the suit. As the complainants in this case were the complainants iii. the case in the Fourth circuit, it may be that, if this had occurred before the action of the court below, now appealed from, no temporary injunction would have been granted. But, as the injunction was granted before the decision of the circuit court of appeals was an· nounced, the position is radically different. The' order was clearly rroper when made, and,. if the circumstances' remained unchanged, we could not reverse it. ' If the decision in the Fourth circuit were in all respects final, we snould hesitate to allow the injunction to continue, especially as the parties complainant are the same in each case. It is, however, not final, as it may be reversed,possibly, on a writ of certiorari from the supreme court. It would not be seemly for !he courts in one circuit to grant, dissolve, and, perhaps, renew, temporary injunctions according to varying conditions of litigation in other ch.·cuits; so that,as this injunction was clearly proper when granted, our only suitable course is not to interfere with it for any reason now apparent to us.' We, of course, do not mean to limit the usual powers of the court below over the injunction, its, while we accept the usual form of order, we attach Wit thequalificatioll's by us in Davis Electrical Works v. Edison Electric-Light Co., 8 C. C. A. 615, 60 Fed. 276,282. Some incidental" matters' were brought to our attention by the parties; but we believe all of them are rendered unimportant, in
Co., ubi supra, the
without the
case atbar, as presented to the court below, and
in Singer Mfg, Co. v. June Mfg.
CLISBY V. REESE.
645
view of the conclusions which we have stated. As neither party takes from our decision anything substantial, and as the circuml>tances are without precedent, we are not satisfied that equity requires that the appellants should pay the costs of this appeal. The order appealed from is affirmed, neither party to recover costs of ap· peal. Note by the Court. Mills Co. v. Eagle, 86 Fed. 608, which came to hand since our opinion was passed down, fully sustains our suggestions about trade· names of geographical origin.
CUSBY et a!. v. REESE. (Circuit Court of Appeals, Seventh Circuit. June 3. 1898.) No. 480. L PATENTS-!NVENTION-ANAI,OGOUS USE.
An exhaust fan for removing dust and chaff, and an elevator for carryIng away the seed, both being old deVices, long used in I'onnection with the threshing of grain, there is no Invention in adapting them to use with a broom-corn cleaner. SAME-PRIOR eSE-ABANDONMENT.
2..
'Vhere for a number of years a farmer had practically m;ed on his own fal'm a broom-corn cleaner, the fact that he afterwards discontinued such use, and the machine was not thereafter employed by others, does not show that It was an abandoned experiment in the sense of the patent law. If there was any abandonment in such case, It was to 'the public. A combination, to be patentable, mnst produce a different force or effect, or result in the eombined forces or proccFses from that given by -their separate parts. Hence the use, with an old style of broom-corn cleaner, of an exhaust fan to take away the dust. and an elevator to scoop awl carry away the grain, is a mere unpatentable aggregation. The Heese patent, 505,128, for improvements in broom-corn cleaners. is void for want of invention, and as covering a mere unpatentable aggregation.
.. SAME-BBOO){·CORN CLEANEHS.
In Error to the Circuit Court of the United States for the Southern District of Illinois. 'l'his was an action at law by Frederick W. Reese against Ripley A, Clisby, John R. Clishy, and Frank \V. Clisby for alleged infringement of a patent fOl' improvements in broom-corn eleaners. 'rIle cause was tried to the conrt without a jury, and judgment was given for plaintiff, to review whieh the defendants have sued out this writ of error. James H. Peirce, for plaintiffs in error. Ephraim Banning, for defendant in erTor. Before WOODS and SHOWALTEH, Circuit Judges, and BUNN, District Judge. BUNN, District Judge. This is an action at law for the infringe· ment of letters patent No. 505,128, issued September 19, 1893, to Frederick W. Reese for improvements in broom-corn cleaners. By stipulation the action was tried before the court without a jury, the