Argued December 1, 1936. This is an appeal from the decree of the court below dismissing the complainant's bill in equity by which it *Page 275 sought to enjoin defendants from using the term "Quaker City" or any trade name in which the word "Quaker" is used, in connection with the sale of their motor oil.
In 1914 the complainant commenced marketing a motor oil under the name "Quaker State." It is prepared from crude oil produced in certain sections of New York, Pennsylvania, Ohio and West Virginia, known in the trade and to the public as Pennsylvania Grade Crude Oil. From 1914 "Quaker State" oil has been sold by automobile service stations and garages throughout the country. It has been extensively advertised in magazines and newspapers, also by means of outdoor signs along the highways. This oil was for some years specifically recommended by the manufacturers of Franklin motor cars for use by their owners. The business has experienced a steady growth, and at the time this case was tried, in 1935, upwards of 70,000 dealers handled the oil and the annual aggregate of sales amounted to 10,000,000 gallons, in 1930 or 1931 to a still larger gallonage.
The defendants started to market "Quaker City" motor oils in 1919 in a small way, selling directly to consumers, for the most part to operators of fleets of motor trucks. In 1920 they began the sale of their product through service stations and garages and continued to do so until the time of trial. Defendants' oil is likewise made from Pennsylvania Crude, and although sold at a slightly lower price, according to the evidence is in no sense inferior to that of complainant. The advertisements of and the containers for the two oils are not the same. The containers for "Quaker State" are primarily green in color, those for "Quaker City" are a bright orange.
The chancellor entered a decree enjoining defendants from selling their product under the trade name "Quaker City" and from using the word "Quaker" alone or with other words as the name of their motor oil. The court *Page 276 in banc overruled the chancellor, the chancellor dissenting, and held that "Quaker State" is a descriptive term; that no exclusive right to use a descriptive term can be secured in the absence of a showing that it has a secondary meaning, and it not being shown that the term as applied to complainant's oil had such a meaning in 1919, when defendants entered the field, the relief prayed for should not be granted.
We think Judge PARRY, speaking for the majority of the court below, properly summed up the legal principles governing the case by saying: "We think the word Quaker [State] is a descriptive term not capable of exclusive appropriation by anyone and that it may be used by the world at large in an honestly descriptive and non-deceptive way. The use of truthfully descriptive terms may not in any case be absolutely prohibited; the first trader being entitled as against another only to such protection as will prevent such other from using the term to pass off his goods as those of the original appropriator, 63 C. J. 425."
Aside from any judicial determination, it is obvious that the words "Quaker State" are geographical. A state, like a person, may have more than one nickname. Because of its founder and its early settlers no other state could be so properly dubbed "Quaker" as Pennsylvania, and when so spoken of everyone of average intelligence understands that Pennsylvania is meant. Had complainant adopted as the designation of its product the words "Pennsylvania State," no one would contend that it had not appropriated a geographical term, none the less has it done so, because it has taken one of the state's nicknames.
There are two cases in which the courts were called upon to determine the nature of the name "Quaker City." In both the name was held to be geographical: Loughran v. Quaker CityChocolate Confectionery Co., 296 Fed. 822, and Quaker CityFlour Mills Co. v. Quaker Oats Co., 43 App. (D.C.) 260. So it has been *Page 277 determined that "Keystone" when used as an adjective for state is a geographical term and not exclusively appropriatable:Cohen v. Nagle, 190 Mass. 4, 76 N.E. 276; Buzby v. Davis, 150 Fed. 275. See as to other not exclusively appropriatable nicknames of states: Nims, Unfair Competition and Trade-Marks (2nd ed.), p. 319.
Mr. Justice DREW, when on the Common Pleas, had occasion to consider the attempt to exclusively appropriate the word "Columbia" as a trade-mark or trade name in Columbia FilmService, Inc. v. Columbia Pictures Corp., 76 Pittsburgh Legal Journal 529, and decided that the plaintiff had not acquired nor could it acquire the exclusive right to the use of the word "Columbia" as a trade name, for the reason that "Columbia" means the United States and is a geographical designation incapable of exclusive use.
It is clear under the best considered authorities that a purely descriptive term such as a geographical one cannot be exclusively appropriated by anyone. This principle is established for the obvious reason that to permit the exclusive appropriation of such a term would prevent others from properly describing their product and hence a monopoly would result: Derenberg, Trade-Mark Protection and Unfair Trading, p. 238. "It is conceded, as a general rule, that the name of a town or city cannot be so appropriated as the exclusive property of anyone": Glendon Iron Co. v. Uhler, 75 Pa. 467, 470. "And whilst the office of a trade-mark is to indicate the personal origin or ownership of an article, yet a merely geographical name cannot be so used": Laughman's Appeal, 128 Pa. 1, 19,18 A. 415; Hoyt v. Hoyt, 143 Pa. 623, 22 A. 755. Three early cases in the United States Supreme Court are frequently cited: CanalCo. v. Clark, 80 U.S. 311, involving the use of the word "Lackawanna" in connection with coal; Brown Chemical Co. v.Meyer, 139 U.S. 540, involving the use of the term "Iron Bitters," and Columbia Mill Co. v. Alcorn, 150 U.S. 460, involving the use of "Columbia" *Page 278 in connection with flour. There are many other cases laying down this principle.*
If, however, the geographical term has taken on a secondary meaning it will be protected. This exception is best stated in the case of Merriam Co. v. Saalfield, 198 Fed. 369, 373: "Primarily, it would seem that one might appropriate to himself for his goods any word or phrase that he chose; but this is not so, because the broader public right prevails, and one may not appropriate to his own exclusive use a word which already belongs to the public and so may be used by anyone of the public. Hence comes the rule, first formulated in trade-mark cases, that there can be no exclusive appropriation of geographical words or words of quality. This is because such words are, or may be, aptly descriptive, and one may properly use for his own product any descriptive words, because such words are of public or common right. It soon developed that this latter rule, literally applied in all cases, would encourage commercial fraud, and that such universal application could not be tolerated by courts of equity; hence came the 'secondary meaning' theory. There is nothing *Page 279 abstruse or complicated about this theory, however difficult its application may sometimes be. It contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article, that in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trade-mark. So it was said that the word had come to have a secondary meaning, although this phrase, 'secondary meaning,' seems not happily chosen, because, in the limited field, this new meaning is primary rather than secondary; that is to say, it is, in that field, the natural meaning. Here, then, is presented a conflict of right. The alleged trespassing defendant has the right to use the word, because in its primary sense or original sense the word is descriptive; but, owing to the fact that the word has come to mean, to a part of the public, something else, it follows that when the defendant approaches that same part of the public with the bare word, and with nothing else, applied to his goods, he deceives that part of the public, and hence he is required to accompany his use of the bare word with sufficient distinguishing marks normally to prevent the otherwise normally resulting fraud." "Secondary meaning is association, nothing more. It exists only in the minds of those of the public who have seen or known or have heard of a brand of goods by some name or sign and have associated the two in their minds": Nims, supra, p. 105, "When the word is incapable of becoming a valid trade-mark, because descriptive or geographical, yet has by use come to stand for a particular maker or vendor, its use by another in this secondary sense will be restrained as unfair and fraudulent competition, and its use in its primary or *Page 280 common sense confined in such a way as will prevent a probable deceit by enabling one maker or vendor to sell his article as the product of another": Computing Scale Co. v. StandardComputing Scale Co., 118 Fed. 965, 967. See also AmericanWaltham Watch Co. v. United States Watch Co., 173 Mass. 85,53 N.E. 141; American Brewing Co. v. St. Louis Brewing Co.,47 Mo. App. 14; Cady v. Schultz, 19 R.I. 193, 32 A. 915; Newman v.Alvord, 49 Barb. 588; Finchley, Inc. v. Finchly Co., 40 F. (2) 736; Bayuk Cigars, Inc. v. Schwartz, 1 F. Supp. 283; Delaware,L. W. R. Co. v. Lackawanna Motor Freight Lines, Inc.,117 N.J. Eq. 385, 175 A. 905; Elgin National Watch Co. v. IllinoisWatch Case Co., 179 U.S. 665; Derenberg, supra, p. 338; Hopkins on Trade-Marks, secs. 65, 66, 67.
The evidence produced by plaintiff as to the words "Quaker State" acquiring a secondary meaning, relates to the years following 1919, when the defendant started in business. The evidence shows that at least some part of the purchasing public in using the words "Quaker State" and "Quaker" in connection with oil had reference to the complainant's product. But even if we assume that the words "Quaker State" acquired a secondary meaning after 1919, it would not aid the complainant. Both on reason and authority the complainant's trade name must have acquired a secondary meaning before the defendants began the manufacture and sale of their product: Upjohn Co. v. Wm. S.Merrell Chemical Co., 269 Fed. 209. The acquisition of a secondary meaning following this time could not justly divest the defendants of their rights.
The only evidence from which it could be inferred that the name of complainant's product had acquired a secondary meaning prior to 1919 is that its product has been marketed and had been nationally advertised for five years under this name. There is no other evidence from which it could be inferred that the public associated "Quaker State" or "Quaker" with the complainant's *Page 281 product at that time. "The mere adoption and use of words in advertisements, circulars and price lists and on signs and stationery give no exclusive right to their use": DeLong Hook Eye Co. v. Hump Hairpin Mfg. Co., 297 Ill. 359, 364,130 N.E. 765. See also Continental Corp v. National Union Radio Corp., 67 F. (2) 938, 942. "It is an accepted principle of the common law that mere advertising is insufficient to establish trade-mark use": Derenberg, supra, p. 505.
But even if it be assumed that the words "Quaker State" acquired a secondary meaning in 1919, it will not help the complainant's case. The defendant can only be enjoined from the use of the name "Quaker City" if it is deceptively similar thereto: Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. 94. There is nothing in the names "Quaker State" and "Quaker City" that should confuse the purchasing public. Even the most careless observer would recognize the distinction between the two. "Quaker State" denotes to all, "Pennsylvania," and "Quaker City" denotes "Philadelphia." A similar situation arose over the right to use the words "Quaker City" and "Quaker Maid" as applied to candy. In that case it was said: "The defendant introduced no evidence that these trade-marks are confusing because of similarity. In other words, it did not attempt to prove that the trade has ever been confused by the marks or that purchasers have ever mistaken one for the other, or have mistaken the wares they mark, a situation which at first induces one's mind to conclude that the ground for opposition is not tenable. Therefore, we must determine from the trade-marks themselves whether they resemble each other so closely that confusion or mistake in the mind of the public will likely occur. . . . Without reciting the processes by which we have arrived at our conclusion, it will be enough to say that after a careful study of these trademarks we have not found such similarity, and, therefore, are constrained to affirm the finding of the learned *Page 282 District Judge": Loughran v. Quaker City Chocolate Confectionery Co., 296 Fed. 822, 826.
It is true that the evidence before us shows there is confusion on the part of some of the consumers. This confusion, however, is the result of the fact that some of the purchasers call the plaintiff's oil by the name "Quaker" rather than "Quaker State." The record is barren as to any confusion between the names "Quaker State" and "Quaker City." Such being the case, the complainant contends that it now has the right to use "Quaker" exclusively as well as "Quaker State," and asks the court to restrain all who use a trade name similar to "Quaker" as well as those who use a name similar to "Quaker State." This argument is inapplicable to the facts in the case for one reason and possibly for two. First, there is no evidence that the complainant's oil was called "Quaker" in 1919, when the defendant started in business. Hence it cannot be said that the defendant violated any rights of the complainant at that time. The fact that the public afterwards began to call the complainant's product "Quaker" should not be permitted to divest the defendants of any rights already acquired. Second, this same argument was raised in Loughran v.Quaker City Chocolate Confectionery Co., supra, and the court dismissed it, saying (p. 826): "But the unusual thing about the opposition of the defendant is that its complaint does not extend so much to a claimed deceptive similarity between the contesting trade-marks as it does to its claimed right, previously stated, to take out of its trade-marks the catch word 'Quaker' and use it in its business generally — and exclusively. The defendant maintains that it has used the word 'Quaker' disenjoined from the word 'City' and has applied it to advertising, wrapping, boxing and selling its candies so long that its candies have become known to the public by this single word and therefore the registration of the plaintiffs' trademark of 'Quaker Maid,' though accompanied with a *Page 283 representation of a Quaker woman, would carry to the trade the idea that the plaintiffs' candies are made by the defendant. This conclusion is only true if the defendant were entitled to the exclusive use of the word 'Quaker.' We cannot see what right it has to appropriate and make claim to the exclusive use of one of several trade-mark words. 'Quaker City,' the name by which the City of Philadelphia is popularly known, is a name freely used by a multitude of tradesmen, as an inspection of the telephone directory of that city will abundantly show. The registration of a trademark does not give the registrant a monopoly of every word in the trade-mark, however, disposed and used." This same thought is tersely stated by Judge JESSELL inCowen v. Hulton, 46 L. T. R. (N.S.) 897: "He has a right to the name by which he sells his paper, but not the name by which people chose to call it." See also Evening Journal Asso. v.Jersey Pub. Co., 96 N.J. Eq. 54, 124 A. 767, where the court held that confusion resulting from the use of the short term "Jersey" is not ground for relief.
In Caron Corporation v. Conde, 126 Misc. (N.Y.) 676, 677,213 N Y S. 735, affirmed 220 A.D. 835, 222 N.Y. S. 782, it was said: "The plaintiff does not use the word 'narcissus,' but the words 'narcisse noir,' namely 'black narcissus.' In mathematics it may be true that a whole is equal to the sum of all its parts, and, conversely, that each part is equal to its proportion of the whole. No such principle, however, can be applied to the use of a combination of words or phrases in the field of the law of unfair competition. A phrase or combination of words may be entitled to absolute protection, while the use of its component parts separately may be open to every one. Assuming that plaintiff is entitled to the sole use of the phrase 'black narcissus' or any colorable imitation thereof, it by no means follows that he has any right to prevent the use of the word 'narcissus' alone." *Page 284
In any event there is no evidence that the public called the complainant's product "Quaker" in 1919 and hence for this reason the argument should not be given effect. This conclusion is supported by Bayuk Cigars, Inc. v. Schwartz, 1 F. Supp. 283, involving the right to use the nickname "Phillies" as applied to cigars.
The testimony discloses that another company located in Indiana adopted the name "Quaker" for its oils two years before the plaintiff's earliest use of the designation, so that it could not be said that plaintiff had exclusively used the name. See Columbia Mill Co. v. Alcorn, 150 U.S. 460.
If it had been shown that the defendants were endeavoring to palm off their product as plaintiff's, a different situation would exist and relief would be granted. Nothing of that kind was attempted to be established. All that appeared was that occasionally some purchaser did not differentiate between "Quaker State" and "Quaker City" when inquiring for or purchasing oil. These two concerns can if good faith is maintained continue to sell their respective oils as they have in the past. If defendants should endeavor to foist their oil on those who desire that of plaintiff by misrepresenting what it really is, relief can be granted against such unfair trade methods.
The decree is affirmed at appellant's cost.
* A few of the most recent ones are: American Watch Import Co.v. Western Clock Co., 16 F. (2) 347 [American]; Cleveland OperaCo. v. Cleveland Civic Opera Asso., 154 N.E. 352, 22 Ohio App. 400 [Cleveland]; Winter Garden Dist. Chamber of Commerce v.Winter Garden Fair, 299 S.W. 512 (Tex.Civ.App.) [Winter Garden]; Standard Oilshares v. Standard Oil Group, 17 Del. Ch. Div. 113, 150 A. 174 [Standard Oilshares]; Yellow Cab Co. v.Creasman, 185 N.C. 551, 117 S.E. 787 [Yellow Cab]; AmericanAutomobile Asso. v. American Automobile Owner's Asso., 216 Cal. 125,13 P.2d 707 [American]; Finchley, Inc., v. FinchlyCo., 40 F. (2) 736 [Finchley]; Van Camp Sea Food Co. v.Cohn-Hopkins, 56 F. (2) 797 [Chicken of the Sea]; SilverSprings Paradise Co. v. Ray, 50 F. (2) 356, Certiorari Denied,52 Sup. Ct. 29 [Silver Springs]; National Grocery Co. v.National Stores Corp., 127 A. 925, 97 N.J. Eq. 360 [National];Fred Butterfield Co. v. Abraham Straus, 208 N.Y. S. 740,212 A.D. 384, Affd. 241 N.Y. 560 [Normandy]; McIlhenny Co.v. Trappey, 277 F. 615 [Tabasco].