of Illinois to contest the right of an Illinois corporation to use the same name. Judge Jenkins has remarked that this holding "is not in accord with the decisions of the federal and of other state courts.

9970

Even where the corporate name attacked so nearly resembles the corporate name of the relator as to be calculated to deceive, and where it is manifest that the secretary of state should have refused to file and record the later prepared certificate of incorporation, thus effecting the incorporation, certiorari will not lie to review his action; as his action is not conclusive and the courts have frequently granted relief to a prior corporation aggrieved." Mandamus will not lie to compel a secretary of state to issue a certificate of incorporation under a name whose use could subsequently be enjoined by a prior user of a substantially identical name.72

Corporation may adopt and act under a trade name.-It has been held that a corporation may adopt a trading name as a trade name, and that its transactions under that trade name are valid; and that it may be sued in its true corporate name upon a contract entered into under a trade name or colloquial name.72b

Corporate name as a defense to charge of unfair competition.Where the word "Hudson" as applied to tires and cords had acquired a secondary meaning indicating the plaintiff's merchandise, the fact that the word was a part of the corporate name of the defendant did not authorize the use of that word in connection with merchandise of the same class."

70-The Peck Bros. & Co. v. Peck Bros. Co., 51 C. C. A. 251; 113 Fed. Rep. 291, 302; citing Celluloid Mfg. Co. v. Cellonite Mfg. Co. 32 Fed. Rep. 94; Rogers Co. v. Rogers Mfg. Co., 17 C. C. A. 576; 70 Fed. Rep. 1017; Publishing Co. v. Dobinson, 72 Fed. Rep. 603; Higgins Co. v. Higgins Soap Co., 144 N. Y. 462; 39 N. E. Rep. 490; 27 L. R. A. 42; 43 Am. St. Rep. 769; Holmes, Booth & Hayden v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278, 293; 9 Am. Rep. 324.

72c

71-People ex rel Columbia Chem. Co. v. O'Brien, 91 N. Y. Supp. 649; 101 App. Div. 296.

72-People ex rel Power v. Rose, 219 Ill. 46; 76 N. E. Rep. 42.

72a-Skene v. Graham, 116 Me. 202, 100 Atl. Rep. 938.

72b-McClain v. Georgian Co., 17 Ga. App. 648, 87 S. E. Rep. 1090.

72c-Hudson Tire Co. v. Hudson Tire & Rubber Corp. 276 Fed. Rep. 59. To the same effect see Mobile Transfer Co. v. Schwarz, 195 Ala. 454, 70 So. Rep. 640.

Character of business and customers considered.-Whether actual deception will arise from the use of a corporate name resembling plaintiff's will frequently turn on the character of the business and the intelligence or expertness of the customers or clients. Where the plaintiff has no dealings with the general public, and its transactions are confined to a small group of expert purchasers a far greater similarity of names will be permitted than in the case of general trading corporations.72d

Names importing a corporation.-In some jurisdictions statute prohibits the use of a name by an individual or copartnership, importing that the business is incorporated. In such jurisdictions the unincorporated users of such names acquire no rights. entitling them to enjoin the adoption of such names by a corporation.72 But aside from such statutory restrictions, such names may acquire a status by the use of persons or firms which will entitle them to enjoin their use by a corporation as its corporate

881. Names of unincorporated associations.-The general principles governing the infringement of corporate names apply to the names of unincorporated associations. The general rule is that relief in equity will be refused where no intent to deceive is proven, and no such similarity of names of the two organizations exist as is calculated to mislead the ordinary citizen of average intelligence.73

§ 82. "Secondary meaning" defined. Of late years the expression "secondary meaning" has been frequently employed in opinions in cases of unfair competition. The expression has come to indicate a meaning that may be "secondary" either in point of intent, or in point of time.

72d-Diamond Drill Co. v. International Diamond Drill Co., 106 Wash. 72, 179 Pac. Rep. 120.

72e-Clark v. Aetna Iron Works, 44 Ills. App. 510; Hazleton Boiler Co. y. Hazleton Tripod Boiler Co., 142 T. 494, 30 N. E. Rep. 339. 72f-Imperial Mfg. Co. V. Schwartz, 105 Ill. App. 525.

73-Perham V. Richman, 158 Fed. Rep. 546; Supreme Lodge K. of P. v. Improved Order K. of P., 113. Mich. 133; 71 N. W. Rep. 470; 38 L. R. A. 658; American Order of Scottish Clans v. Merrill, 151 Mass. 558; 24 N. E. Rep. 918; 8 L. R. A. 320.

The United States Supreme Court has said of a mark that "whatever its original weakness, the mark for years has acquired a secondary significance, and has indicated the plaintiff's product alone. It means a single thing coming from a single source, and well-known to the community. * acquired a secondary meaning in which, perhaps, the product is more emphasized than the producer, but to which the producer is entitled.'' 73a

It has

Thus, in a leading English case, Lord Macnaghten said: "The appellants concede-they can not, indeed, any longer dispute that everybody who makes belting of camel hair, is entitled to describe his belting as 'Camel-Hair Belting,' provided he does so fairly. But they contend, and I think with reason, that neither Banham nor anybody else is entitled to steal Reddaway's trade under color of imparting accurate and possibly interesting information. Practically the only difference which the unexpected turn in the evidence has made is this: the case now comes under the second branch of the proposition laid down by Lord Justice James if 'Camel-Hair Belting' had kept its place as a fanciful term, it would have fallen under the first. The learned counsel for the respondents maintained that the expression 'Camel-Hair Belting,' used by Banham, was the 'simple truth.' Their proposition was that, 'where a man is simply telling the truth as to the way in which his goods are made, or as to the materials of which they are composed, he can not be held liable for mistakes which the public may make.' That seems to me to be rather begging the question. Can it be said that the description 'Camel-Hair Belting,' as used by Banham, is the simple truth? I will not call it an abuse of language to say so, but certainly it is not altogether a happy expression. The whole merit of that description-its one virtue for Banham's purposes-lies in its duplicity. It means two things. At Banham's works, where it can not mean Reddaway's belting, it may be construed to mean belting made of camel's hair. Abroad, to the German manufac

73a-Mr. Justice Holmes in CocaCola Co. v. Koke Co., 254 U. S. 143,

145, 146, 65 L. Ed. 189, 192.

turer, to the Bombay mill owner, to the up-country native, it must mean Reddaway's belting; it can mean nothing else. I venture to think that a statement which is literally true, but which is intended to convey a false impression, has something of a faulty ring about it; it is not sterling coin; it has no right to the genuine stamp and impress of truth."' 74

Here, both in point of time and point of intent, "CamelHair" meant primarily belting having camel's hair as a component.

Where the mark in its first application is a valid trademark, "the mere fact that the article has obtained such a wide sale that the mark has also become indicative of quality is not of itself sufficient to debar the owner of protection or make it the common property of the trade."' 75

Where, on the other hand, the mark in the first instance is generic, because merely descriptive or geographical, or the name of a person, and under that mark a particular trader has occupied the market, a subsequent invasion of the market by another using the mark may (though it does not necessarily) constitute unfair competition; but no matter how long the use continues, the mark will never become a technical trademark, although the long established de facto use of any generic term, even a surname, as a distinctive mark in trade may cause it to become registrable as a trademark.76a

It

The rule has been frequently applied and illustrated. has been admirably stated by Judge Lurton in the following terms:

"That a descriptive word or sign or symbol, descriptive from popular use in a descriptive sense, may acquire a secondary significance denoting origin or ownership, is true.

74-Reddaway v. Banham (1896), App. Cas. 199.

75-Brown, J., in Burton Stratton, 12 Fed. Rep. 696, 702.

V.

76-Brennan v. Emery- BirdThayer Dry-goods Co., 47 C. C. A. 532; 108 Fed. Rep. 624, 627; Computing Scale Co. v. Standard Com

puting Scale Co., 55 C. C. A. 459; 118 Fed. Rep. 965, 968.

76a—In re Lodge Sparking-Plug Co.'s Application, N. Z. L. A. (1921) 463 (under the New Zealand Patents etc. Act, 1911, S. 64); Ex parte Martell, So. African L. R. (Transvaal Div.) 1920, 53.

But this secondary significance is not protected as a trademark, for a descriptive word is not the subject of a valid trademark; the only office of a trademark being to indicate origin or ownership. When a descriptive or geographical word or symbol comes by adoption to have a secondary meaning denoting origin, its use in this secondary sense may be restrained, if it amounts to unfair competition. In such case, if the use of it by another be for the purpose of palming off the goods of one as and for the goods of another, a court of equity will interfere for the purpose of preventing such a fraud. But this kind of relief depends upon the facts of each case, and does not at all come under the rules applicable to the infringement of a trademark."'"7

As to the secondary meaning of geographical names, Mr. Justice Brown has said, "geographical names often acquire a secondary significance indicative not only of the place of manufacture or production, but of the name of the manufacturer or producer and the excellence of the thing manufactured or produced, which enables the owner to assert an exclusive right to such name as against every one not doing business within the same geographical limits; and even as against them, if the name be used fraudulently for the purpose of misleading buyers as to the actual origin of the thing produced, or of passing off the productions of one person as those of another.'' 78

None of the rules we are here considering applies to a case where the defendant acts so quickly in appropriating the plain

77-Vacuum Oil Co. v. Climax Refining Co., 56 C. C. A. 90; 120 Fed. Rep. 254. To the same effect see Standard Varnish Works v. Fisher, 153 Fed. Rep. 928. "It is well settled that words which are not in themselves a valid trademark may, by association with the goods of a particular manufacturer, acquire a secondary signification differing from their primary meaning and denoting the product of that manufacturer, and when this is made to appear their use in that sense will be protected by restraining the use of the words by others in such a way as to amount to a fraud or deception on the public and to cause injury to those to

whose employment of them a special meaning has become attached, upon the principle, which underlies the law pertaining to trademarks, that the manufacturer of the particular goods is entitled to the reputation or goodwill which they have acquired, and the public is entitled to the means of distinguishing be tween them and other goods, or, in other words, to state it concisely, that no one may pass off his goods as and for the goods of another." Haight, J., in Rubber & Celluloid H. T. Co. v. F. W. DeVoe & C. T. Reynolds Co., 233 Fed. Rep. 150, 154.

78-La Republique Francaise v. Saratoga Vichy Spring Co., 191 U.