A manufacturer or seller of an article is not permitted to appropriate as a trade-mark a name commonly used to describe the article. Flour is manufactured and sold by many persons. Anyone has the right to manufacture and sell flour by that name. No one is permitted to appropriate to himself as a trade-mark the name Flour. A person may, however, apply an arbitrary term, not describing the thing produced, for the purpose of designating his brand of flour as distinguished from other brands of flour. While a manufacturer of flour is not permitted to appropriate as a trade-mark to be used on flour the name Flour, he may be permitted to use the term Ideal. The person first adopting the name Ideal as a trade-mark in the sale of flour, acquires a property right in the name. The law will protect him in the use of this name in connection with the sale and manufacture of flour.
Any arbitrary name, sign, mark, symbol, letter or number used for the purpose of designating the origin or ownership of goods may be appropriated as a trade-mark by the person first adopting and continuing its use. A person is not permitted to adopt as a trade-mark anything which indicates the grade or ingredients, or which is descriptive of the article sold or manufactured. The reason for this rule is that otherwise a person adopting the name would have a monopoly on the production of such articles. Crack-Proof Rubber Goods, as applied to rubber goods; A1 Honey, as applied to honey, are terms descriptive of quality of goods and cannot be appropriated.
A proper name of a person is not the subject of a valid trade-mark. Persons of the same name are permitted ordinarily to use their name in the manufacture of goods of the same nature. A party is not permitted, however, to manufacture or sell his goods as the goods of another. He may not be permitted to use his own name in the sale of certain goods if another has long made and sold goods under the same name, and if purchasers are defrauded thereby, or if confusion results. This is not by reason of a person having a trade-mark in his own name, but by reason of unfair trade. This is discussed under the section on Unfair Trade.
343. Trade=Marks (Continued). A name of a place or locality cannot be appropriated as a trade-mark. Any person is permitted to use the name of a place or locality to designate the origin of the goods and it is the common property of all as much as any descriptive name. A geographical name cannot be appropriated as a trade-mark. A common example of this principle is the use of the term, Lackawanna. This is the name of a district in Pennsylvania. A coal company endeavored to appropriate the name, but was not permitted to use it as a trade-mark. Others, mining coal in the Lackawanna district have an equal right to designate their coal by the same name. Any fanciful or arbitrary name not describing the article, may, however, be adopted as a trade-mark. A person first using such an arbitrary mark in the manufacture or sale of a particular class of goods acquires a trade-mark. He may use the mark without any intention of acquiring a trade-mark therein. If another person attempts to use the mark, no matter if without intent to defraud, he may be enjoined from its use. The owner of a trade-mark has no greater right than any other person to use the trade-mark on classes of goods different from the class on which it has been acquired. A trade-mark used on flour may also be used on stoves by another person. This principle is subject to the limitations that one person is not permitted to deceive purchasers in leading them to believe that they are purchasing the goods of another. This question is discussed under the section on Unfair Trade.
A trade-mark is acquired by the person first using it in connection with the sale or manufacture of goods. It is not necessary that it be adopted with the intention of being used as a trade-mark. A trade-mark may be lost by discontinuance. A trade-mark will not be allowed on an article which it is against public policy to manufacture. An example of this principle is adulterated food or medicine. A trade-mark which does not indicate that the goods manufactured or sold are the result of the personal skill of a particular person, may be sold with the business in connection with which the trade-mark is used.
344. Trade Names. A person is permitted to use a name other than his own for the purpose of trade. For example, John Smith may use the name The John Smith Co., The Eureka Co., The L. X. Co., or any arbitrary or fanciful name he may choose, so long as it does not conflict with the rights of others. Such names are called trade names. Their adoption and use are governed by the same legal principles as trade-marks. Trade names, however, are applied to a business, while trade-marks are brands applied to articles of manufacture or sale. As in the use of trade-marks, a person is not protected in the use of trade names which describe the article manufactured or sold. The use of the name, Cleveland Fertilizer Co. by John Smith, does not prevent others from using the same name. The law does not permit one party to monopolize the use of the term fertilizer; neither does it permit him to monopolize the geographical term, Cleveland. The party first adopting a trade name other than a descriptive geographical, individual, or proper name, acquires the right to use it as a trade name.
While a person cannot acquire such a right in a geographical or descriptive name, he may, by long use of it, acquire the right to prevent others from using it in such a manner as to deceive purchasers. A person is not permitted to sell his goods as the goods of another. This right to prevent others from using a name which deceives the public is not by reason of any trade name acquired, but by reason of a person unfairly making others believe they were purchasing the goods of one person, when, in reality, they are purchasing the goods of others.
345. Unfair Trade. A trade-mark, or a trade name cannot be descriptive of the articles sold or manufactured. Neither can a proper name or a geographical name be appropriated to a trade-mark or name. To enable a person to acquire a trade-mark or trade name, a mark or name must be adopted which in no way describes the article manufactured or sold. It must be one that is not taken from the place where the goods are manufactured or sold, or from the name of the inventor or manufacturer. It must be an arbitrary or fanciful name or mark. A manufacturer of flour may use as a trade-mark the name Beauty Flour, but not Minnesota Flour, or Pure Flour. A party may use as a trade-mark for men's collars the picture of a lion, but not the word linen. When a trade-mark or a trade name has once been used as such, the owner, unless he loses or transfers the right, acquires the sole right to its use, and may compel others to cease using it, regardless of actual damages or confusion. At the present time, the courts recognize a principle known as unfair trade. Even though a person has adopted a geographical name, or a name descriptive of the articles manufactured or sold as a trade name, he is permitted to enjoin others from the use of this name, if the use of the same enables the latter to sell his goods as the goods of the former. A person cannot use the name Cleveland Fertilizer Co., so as to acquire a trade name therein. But if the name Cleveland Fertilizer Co., is used by a person so long and so extensively as to acquire for its owner a broad reputation as a manufacturer of an excellent quality of fertilizer, another who adopts the name may be enjoined from its use, if purchasers are deceived thereby. This is on the ground of unfair trade.
346. Unfair Trade (Continued). The same principle applies in the use of individual names. A person may not acquire a trade-mark in his own or in any individual or proper name, since others have the right to the use of their own name. But a person may acquire such a reputation as a manufacturer of a particular article, that if others of the same name are permitted to use their name in the same connection without distinguishing features, the public will be deceived in making purchases. For the purpose of protecting the public from being deceived, the courts sometimes enjoin persons from the use of their own name in connection with the manufacture and sale of certain articles. For example, Thomas Edison has acquired fame as an inventor and manufacturer of Edison Batteries. A person by the name of Edison would not be permitted to manufacture and sell electric batteries under the name of Edison Electric Batteries, for the reason that the public would be deceived thereby. This would be what is known as unfair trade. The same principle applies to geographical names. A geographical, individual, proper, or descriptive name cannot be used as a trade name, or a trade-mark, but they can be so used as to prevent others from using them, by reason of violating the law of unfair trade.