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.
A Trade-Mark Must Not Consist of the Insignia of the American National Red Cross
The Act of 1905 (the trade-mark statute) is silent on the subject of the Red Cross as a trade-mark. Its use as a trade-mark, or as an advertisement, or in trade in any form, is prohibited by the act incorporating the American National Red Cross, approved January 5, 1905. An extract from this act, bearing on this subject, is quoted here:
"Nor shall it be lawful for any person or corporation, other than the Red Cross of America, not now lawfully entitled to use the sign of the Red Cross, hereafter to use such sign or any insignia colored in imitation thereof for the purposes of trade, or as an advertisement to induce the sale of any article whatsoever. If any person violates the provisions of this section, he shall be guilty of a misdemeanor and shall be liable to a fine of not less than one nor more than five hundred dollars, or imprisonment for a term not exceeding one year, or both, for each and every offense. The fine so collected shall be paid to the American National Red Cross."
In the Official Gazette there is reported the case of an applicant who applied for registration of a label for cough syrup, containing the emblem of the Red Cross and the words "Red Cross". This label having been refused registration, the applicant submitted it in an amended form with the Red Cross emblem left out, but with the wording left intact. It was contended by him that the Act of January 5, 1905, prohibited only the use of the "sign of the Red Cross", and that by implication the words "Red Cross" should be considered registrable. This contention of the applicant was held by the Commissioner to be an attempt to evade the spirit of the law, and registration was refused.
A trade-mark containing the Red Cross emblem does not fall within the prohibition expressed in the statute if it has been in exclusive use by the applicant for ten years prior to 1905.