Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665 (1901)

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Elgin National Watch Company v. Illinois Watch Case Company

No. 121

Argued December 6, 1900
Decided January 7, 1901
179 U.S. 665

APPEAL FROM THE CIRCUIT COURT OF

APPEALS FOR THE SEVENTH CIRCUIT

Syllabus

The term "trademark" means a distinctive mark of authenticity through which the products of particular manufacturers or the vendible commodities of particular merchants may be distinguished from those of others.

As its office is to point out distinctively the origin or ownership of the articles to which it is affixed, no sign or form of words can be appropriated as a valid trademark which, from the fact conveyed by its primary meaning, others may employ with equal truth and with equal right, for the same purpose.

Words which are merely descriptive of the place where an article is manufactured cannot be monopolized as a trademark, and this is true of the word "Elgin," as in controversy in this case.

Where such a word has acquired a secondary signification in connection with its use, protection from imposition and fraud will be afforded by the courts, while at the same time it may not be susceptible of registration as a trademark under the Act of Congress of March 3, 1881.

The parties to this suit being all citizens of the same state, and the word in controversy being a geographical name which could not be properly registered as a valid trademark under the statute, the circuit court had no jurisdiction.

In view of this conclusion and of the fact that the constitutionality of the act of Congress was not passed on by the court below, that subject is not considered.

This was a bill filed in the Circuit Court of the United States for the Northern District of Illinois by the Elgin National Watch Company, a corporation organized under the laws of the State of Illinois, having its principal place of business at Elgin and its office in Chicago in that state, against the Illinois Watch case Company, also a corporation of Illinois, with its principal place of business at Elgin, and certain other defendants, citizens of Illinois.

The bill alleged:

That prior to the 11th day of April, A.D. 1868, your orator was engaged in the business of manufacturing watches at Elgin, Illinois, which was then a small town containing no other manufactory of watches or watch cases; that your orator had built up at said town a very large business in the manufacture of watches and watch movements, and that said watches and watch movements so made by your orator had become known all over the world, and had been largely sold and used not only in this but in foreign countries.

. . . That at and before said 11th day of April, A.D. 1868, your orator had adopted the word "Elgin" as a trademark for its said watches and watch movements; that said trademark was marked upon the watches and watch movements made by your orator, both upon those which entered into commerce in this country and those which were exported to and sold in foreign countries; that your orator’s watches became known all over the world as Elgin watches, and their origin and source, as a product of your orator’s manufacture, were distinguished from those of all other watches manufactured in any part of the world by said distinguishing word or trademark "Elgin;" that from said 11th day of April, A.D. 1868, to the present time, your orator, both in the goods manufactured and sold by it in this country and those exported by it to and sold in foreign countries, has continued to use said trademark upon its watches and watch movements, and is still using it, and that said trademark has always served and still serves to distinguish your orator’s product from that of all other manufacturers.

. . That at the time of its adoption of said trademark, no other person, firm, or corporation engaged in the manufacture or sale of watches was using the word "Elgin" as a trademark or as a designation to designate its goods from those of other manufacturers, and that your orator had the legal right to appropriate and use the said word as its lawful trademark for its watches and watch movements.

. . That the watches and watch movements made by your orator have achieved a very great reputation throughout the world, and that such reputation is of great commercial value to your orator in its business aforesaid.

It was further averred

that, on the 19th day of July, A.D. 1892, under the act of Congress relating to the registration of trademarks, your orator caused said trademark to be duly registered in the Patent Office of the United States according to law, as by the certificate of said registration, or a copy thereof, duly certified by the Commissioner of Patents, here in court to be produced, will more fully and at large appear.

The bill charged that defendants had infringed the rights of complainant by engraving or otherwise affixing the word "Elgin" to the watch cases made and sold by them; that such watch cases were adapted to receiving watch movements of different construction from those made by complainant; that inferior watch movements were liable to be and often were encased in them, and that, when so encased, the entire watch, including both movement and case, appeared upon the market with the word "Elgin" upon it, thereby leading the public to believe that the watch as an entirety was made by the complainant, and enabling parties wrongfully using complainant’s trademark to profit by the great reputation of complainant, to palm off other and inferior goods as goods made by complainant, to injure the reputation of complainant as a watchmaker, and to deprive it of a portion of the business and patronage which it would otherwise receive from the public, to the irreparable damage of complainant.

The prayer was for damages and for an injunction to restrain defendants

from directly or indirectly making or selling any watch case or watch cases marked with your orator’s said trademark, and from using your orator’s said trademark in any way upon watches or watch cases or in the defendants’ printed advertisements, circulars, labels, or the boxes or packages in which their said watch cases are put or exposed for sale.

A demurrer having been overruled, defendants answered denying the legality of the registration of the alleged trademark, and any attempt on their part to deceive the public, or the doing of anything they did not have the legal right to do, and asserting that they had never manufactured or offered for sale watches or watch movements; that they manufactured at Elgin watch cases only; that complainant had never manufactured or sold watch cases with the word "Elgin" on them; that the business of the two companies was separate and distinct, and that whenever the defendant company had used the word "Elgin," it had usually, if not invariably, been done in connection with some other word, as "Elgin Giant" or "Elgin Commander" or "Elgin Tiger," or some other word in combination with the word "Elgin;" that defendant company had never used the word "Elgin" alone or separately as registered by complainant upon goods exported to foreign nations or used in foreign commerce, but only in domestic commerce, and to inform the public of the place where watch cases of the defendant company were manufactured; that such watches were sold upon a guaranty running for a number of years, so that it was necessary to indicate the name of the location where defendant company was carrying on its business, that purchasers might be able to find the company in case it became necessary to call upon it to make good its guaranties,

and that, owing to the distinct lines of business in which the complainant and the defendant company are engaged, no misunderstanding or confusion has arisen or can arise, as these defendants are informed and believe.

It was further alleged

that the word "Elgin," being a geographical name or word indicating the name of a prominent manufacturing city in which any manufacturer of watches, watch movements, or watch cases is at liberty to locate and carry on his business, is not appropriable by any single manufacturing person, firm, or corporation, but is open as of common right to the use of any person, firm, or corporation carrying on business at the City of Elgin.

Replication was filed, proofs taken, and a hearing had. By leave of court, complainant amended its bill, alleging that the watch cases so manufactured and marked by defendants in violation of complainant’s rights were intended by defendants to be sold in foreign countries, and were in fact exported to and sold in foreign countries.

The circuit court decreed that the use of the word "Elgin," whether alone or in connection with other words, was a violation and infringement of complainant’s exclusive rights in the premises, and that an injunction issue restraining the use of the word, alone or in connection with other words or devices, upon watches, or watch cases, or packages containing watches or watch cases, going into commerce with foreign nations or with the Indian tribes, in such a way as to be liable to cause purchasers or others to mistake said watches or the watch movements incased in said watch cases for watches or watch movements manufactured by complainant. 89 F. 487. The case having been carried to the court of appeals, that court reversed the decree of the circuit court and remanded the cause with instructions to dismiss the bill. 94 F. 667.