A Trade-Mark May Not Be a Geographical Name or Term
The object of this provision of the law is to prohibit the appropriation of the name of a place by an individual to the detriment of other manufacturers in the same locality, as well as to prevent a misrepresentation of the place of origin of a trade-marked article.
This restriction does not apply to geographical names used in an arbitrary or fanciful sense.
This shows how the reader's attention is called to the Dupont brush trade-mark in advertisements.
The Fleischman Company, well-known bakers of New York, bake and sell a Vienna Bread. The term "Vienna" used in this connection was held, in a test case, to be a valid trade-mark, although it is a geographical name.
In the decision bearing on the Vienna trade-mark for bread, the Court said: "As a mark for bread it is purely arbitrary, and is in no manner descriptive of the ingredients or the quality of the article. No deception is practised, because the place of its manufacture is given, and it is known that bread cannot be imported from abroad for use here."
"Durham", a name applied to tobacco, has been judicially held not to be a valid trade-mark against another manufacturer located in the town of Durham. While any tobacco manufacturer in Durham has a right to call his tobacco "Durham Tobacco", he cannot imitate the label of the original Durham tobacco, or use the advertising symbol of a bull, without being liable to injunction and a suit under the law of unfair competition.
"French", applied to paints, was considered a geographical name, and not valid as a trade-mark. "French Tissue"—the name of a court-plaster—was considered invalid, the first word being a geographical term and the second a descriptive word.
The word "Celtic", however, has been considered valid as a trade-mark for tea. The Commissioner of Patents, before whom the case went on an appeal, decided that while "Grecian", "Roman" and "Oriental" had been held to be geographical, as each of these terms refers to a certain section of the globe, the word "Celtic" is not. There seems to be no authority to sustain the popular opinion that "Celtic" refers only to Ireland. The dictionary defines "Celtic" as "pertaining to the Celts", of whom the Irish are only a branch. It has never been applied to any specific locality.
"Yucatan" applied to leather; "Manhattan" as the name of sewing-machines; and "Pittsburgh" as a trade-mark on pumps, have all been held to be geographical, and therefore invalid.
In a recent decision of the Supreme Court, the exclusive right of the Carthusian monks to use their well-known trade-mark for their Liqueur Chartreuse, was upheld. This right was attacked on the ground that Chartreuse is a geographical name, the liqueur having been made at a monastery called for many centuries "La Grande Chartreuse".
In his opinion Mr. Justice Hughes said:
"If it be assumed that the monks took their name from the region in France in which they settled in the eleventh century, it still remains true that it became peculiarly their designation. And the word 'Chartreuse', as applied to the liqueur, which for generations they made and sold, cannot be regarded in a proper sense as a geographical name. It had exclusive reference to the fact that it was the liqueur made by the Carthusian monks at their monastery. So far as it embraced the notion of place, the description was not of district, but of the monastery of the order—the abode of the monks—and the term, in its entirety, pointed to production by the monks."
While a geographical name may be upheld as a valid trade-mark, under exceptional conditions—as shown in the Fleischman case—the safe plan to follow is to avoid names of this character when selecting a trade-mark.
Under the collection of legal precedents constituting the law of unfair trade, the owner of a geographical trade-mark may successfully defend his right to its exclusive use if he has acquired such a reputation under it that it has grown to be, in the public mind, an arbitrary designation of his goods.
The American Waltham Watch Company, manufacturing watches at Waltham, Massachusetts, has legally prevented other manufacturers in Waltham from calling their product "Waltham" watches unless the name is used with some accompanying statement which clearly distinguishes these watches from the original Waltham watch.
There is an Elgin Watch, a Kalamazoo Stove and a Bristol Fishing-Rod, to single out a few examples of geographical terms used as trade-marks. The exclusive use of these trade-marks by the makers of the well-known articles which they represent can no doubt be legally sustained on the ground that these names have become arbitrarily identified, through years of use and extensive distribution, with the articles to which they are applied, and that their indiscriminate use would cause confusion in the public mind and loss to the original owners.
Their security as trade-marks rests, not upon the letter of the trade-mark act, but upon the law of unfair trade.