7 Blatchf. 112 | U.S. Circuit Court for the District of Southern New York | 1870
The plaintiffs are a corporation created by the state of New Xork. 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 said railroad and said canal. They assert, in their bill, which was filed January 2d, 1807, 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 “Lack-awanna 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 “Pitts-ton 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, “Lack-awanna coal,” and, to carry out and effect such fraud and deception, has erected, or caused to be erected, ana 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 m the city of Providence, that he has for sale “Lackawanna coal,” whereas, 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 “Pitts-ton coal” and “Scranton coal,” so 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 “Lack-awanna,” painted or inscribed thereon, and from advertising “Lackawanna coal” for sale, and from selling, or offering or attempting 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 ha may have realized from tile 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, 1S67, denies that the name of “Lack-awanna coal” ever has been, or now is. either in the city of Providence and vicinity, or elsewhere, the peculiar property and trademark of the plaintiff's. It admits that the
I have come to the conclusion that, upon established principles of equity jurisprudence, the bill in this ease 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 trade-mark, their acts, in regal'd 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 estop-pel against their claim to the relief prayed for by the bill. The defendant has been in the coal business at Providence since the year 1S40, engaged in buying and selling coal at wholesale and retail. The coal mined and put in market by the Pennsylvania Coal Company, being that which is called in the bill “Pittston coal,” was first put into the market in 1S50 or 1831. The coal mined and put in market by the Delaware, Lackawanna and Western Railroad Company, being that which is called in the bill “Scranton coal,” was first put into the market in 1830 or 1S57. Ever since those coals were so first put into the market, the defendant has been in the habit of selling them as “Lackawanna coal.” Until August, 1800, the plaintiffs never complained to the defendant that he was using without right the words “Lackawanna coal,” to designate Pittston coal and Scranton coal. From about 1857 to 1800, a Mr. Lawton was agent of the plaintiffs for the sale of their coal in New England, and conducted such agency at Providence, among other places. During that period, Mr. Lawton complained to Mr. Soutter, the vice president of the plaintiffs, that other persons were selling as Lackawanna coal, coal not put into market by the plaintiffs, and, under the instructions of Mr. Soutter, Mr. Lawton placed on the premises in Providence from which the coal of the plaintiffs was being sold by him, Law-ton, a sign bearing the words “Old Company’s Lackawanna Coal.” Mr. Lawton testifies, that the object in erecting such sign was to designate the coal of the plaintiffs sold by him from Scranton coal then being sold by the defendant. The agency of Mi'. Lawton at Providence consisted of the exclusive privilege of selling at that place the coal of the plaintiffs shipped by them to that place, for which he received from the plaintiffs a commission. During the year 1800, the plaintiffs kept a yard in Providence for the sale of their coal, for which yard they paid rent. During that year, the attention of then' agent at Providence, Mr. Hopkins, was called by Mr. Soutter, who ivas still the vice president of the plaintiffs, to the fact that the defendant was selling at Providence, as “Lackawanna coal,” Pittston coal and Scranton coal. On the 24th of January, 1860,
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. There is no evidence in this case to show that the defendant has ever untruly represented Pittston coal or Scranton coal as having been mined or put into market by the plaintiffs, or has ever untruly sold either of such coals as having been mined or put into market by the plaintiffs. It appears that other dealers in coal in Providence have, for many years past been selling Scranton coal as Lackawanna coal. Mr. Moses Taylor, who has been for the last fifteen years a director and manager of the Delaware, Lack-awanna and 'Western Railroad Company, which mines and puts into the market what is called in the bill “Scranton coal,” testifies, that his company has sold to the defendant thousands of tons of coal of its own production by the name of “Lackawanna coal” simply.
I do not see that the defendant, in what he has done, has been acting otherwise than honestly and fairly. He has not sold as the •plaintiffs’ coal what was not their coal; and, even assuming the existence, to the fullest extent claimed in the bill, of the right of the plaintiffs, as against others than the defendant, to the exclusive use of the words “Lack-awanna coal,” as a trade-mark, the defendant, in all that he has done, has done it under such acts of acquiescence on the part of the plaintiffs as are equivalent to a license to him by them to do what he has done. To grant the prayer of the bUl, namely, to enjoin the defendant from continuing to keep up the signs referred to, bearing the words “Lackawanna coal,” and from advertising “Lackawanna coal” for sale, and from sell? ing Scranton coal or .Pittston coal as “Lackr awanna coal,” and to compel him to pay to the plaintiffs the profits he has derived from the use in his business of the words “Lack-awanna coal,” in the way in which he has used them, and from the sale of Pittston coal and Scranton coal under the name of “Lackawanna coal,” would, therefore, be a violation of every true principle of equity.
The bill is dismissed, with costs,