Genesee Salt Co. v. Burnap

TAFT, Circuit Judge

(after stating the facts as above). It is well □ settled, and we have just had occasion to decide in this court, that words merely descriptive of the character, quality, and composition of the article, or of the place where it is manufactured or produced, cannot be monopolized as a trade-mark. California Fig-Syrup Co. v. Frederick Stearns & Co. (decided by this court at the present term) 73 Fed. 812; Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625; Canal Co. v. Clark, 13 Wall. 311. The name “Genesee,” when used in connection with complainant’s salt, obviously refers to the place of its production. The complainant could, therefore, assert no trademark property in it. This principle is not denied by counsel for complainant. He relies rather upon that line of cases in which equitable relief has been granted to restrain unfair competition. Where one is shown to be palming off his manufactures as those of another, he may be enjoined, even where he commits the fraud by the use of names which are not the subject of trade-mark property. This principle is well established by the decisions of the supreme court of the United States in Lawrence Manuff'g Co. v. Tennessee Manuff'g Co., 138 U. S. 537, 11 Sup. Ct. 396; and McLean v. Fleming, 96 U. S. 245,— and in the English courts in the cases of Croft v. Day, 7 Beav. 84; Holloway v. Holloway, 13 Beav. 209; Wotherspoon v. Currie, L. R. 5 H. L. 508; Thompson v. Montgomery, 41 Ch. Div. 35-50. We do not differ from counsel for the complainant n his exposition of the principles of law. His difficulty is that the facts of the case do not justify their full application. The evidence upon which it is claimed that Burnap & Burnap were fraudulently palming off the Genesee County Sait as the salt of the Genesee Salt Company is very slight. There is possibly enough evidence to sustain the claim that originally the name “Genesee County” was adopted with the abbreviation of “Co.” for “County” to induce the purchase of the Genesee County Balt as that of the Genesee Balt Company, though it must be admitted that a most cursory'examination would show very little resemblance between the packages; for the one is white linen, and the other is a brown English toweling. The lettering is not the same, one being solid; and the other open; and the only resemblance is in the collocation of the words “Genesee Co.,” “Factory Filled,” and “Salt.” It appears that, immediately '.upon the complaint being made by the Genesee Salt Company that this was a colorable imitation of their goods, Burnap & Burnap sent out 5,000 circulars making clear the difference, and that their salt was Genesee County Salt, as distinguished from the salt of the Genesee Salt Company. The court below was of opinion that it would sufficiently protect the complainants from unfair competition to require that the word “Co.” should be written out in full, so as to read “County,” and that the defendants should be enjoined from representing in any way that the salt of the defendants was the salt of the complainant; but the court was of opinion that it ought not to enjoin the defendants from using the words “Genesee County Salt” and “Genesee Salt” in the sale of salt actually manufactured in Genesee county, when those words were used without abbreviation, and not in imitation of the trade-mark of the complainant, as set forth in the bill. On the whole case, we think that the court gave the complainant all that it was entitled to. If the defendants had been persistently palming off their goods as the goods of the complainant, equitable relief might have gone to the extent of enjoining the use of the word “Genesee” by defendants; but, by their circulars, the defendants, if they ever had any purpose to pirate the business of the Genesee Salt Company by use of the words “Genesee Co.,” abandoned it, and explained to the public what was the fact, namely, that their salt was made in Genesee county. They may rightfully call it “Genesee Salt,” or “Genesee County Salt,”’ provided they do not mislead the public into buying their salt as the salt of the complainant.. Under the restrictions of the decree of the circuit court, we do not think there is any evidence that they are doing this, or intend to do it. The decree is affirmed.