Warwood v. Hubbard , 218 Mont. 438 ( 1985 )

No. 85-53
IN THE SUPREME COURT OF THE STATE OF MONTANA
1985
DAVE WARWOOD,
Plaintiff and Appellant,
JAMES L. HUBBARD AND YELLOWSTONE
OUTFITTERS, INC.,
Defendants and Respondents.
APPEAL FROM: District Court of the Eighteenth Judicial District,
In and for the County of Gallatin,
The Honorable Joseph B. Gary, Judge presid.ing.
COUNSEL OF RECORD:
For Appellant:
Richard C. Conover argued, Bozeman, Montana
For Respondents:
Morrow, Sedivy & Bennett; Edmund P. Sedivy argued,
Bozeman, Montana
Submitted: October 28, 1985
Decided: November 19, 1985
Filed:
NOV i 9 1985
Clerk
Mr. Justice William E. Hunt, Sr., delivered the Opinion of
the Court.
Plaintiff-appellant, Warwood, appeals an order of the
Gallatin County District Court denying his motion for
preliminary injunction to enjoin defendant-respondent from
using the name "Yellowstone Outfitters" in conjunction with
outfitting services. We affirm.
Appellant and respondent both offer outfitting services
near Yellowstone Park, and both operate under the name
"Yellowstone Outfitters." Documentary evidence shows
respondent was using the name in 1979, while appellant's
first documented use was in 1980. Neither party knew of the
other's use of the name until 1984.
The appellant raises several issues on appeal. However,
the only issue we need to address is whether "Yellowstone
Outfitters" is primarily geographically descriptive, and
therefore not subject to exclusive appropriation as a mark at
common law and not subject to registra.tion according to
statute. We conclude that it is primarily geographically
descriptive.
The controlling statute is section 30-13-303, MCA.
Under that statute:
(1) A mark by which the goods or services of any
applicant for registration may be distinguished
from the goods or services of others may not be
registered if it:
Ie) comprises a mark that:
(i) when applied to the goods or services of: the
applicant, is merely descriptive or deceptively
misdescriptive of them;
(ii) when applied to the goods or services of the
a.ppl.icant is primarily geographically descriptive
or deceptively misdescriptive of them . . ..
The only Montana case concerning geographically
descriptive names is Esselstyn v. Holmes (1911), 42 Mont.
507, 114 P. 118. In that case, we held that the District
Court properly refused to enjoin the defendant from using the
trade name "Owl Creek Coal" in the sale of coal mined, in
common with coal mined by the plaintiff, in a region of
country known as the Owl Creek Coal Field.
This Court's reasoning in Esselstyn is equally
applicable to the present case as well. In Esselstyn, we
stated that:
[N]o one can apply the name of a district or
country to a well-known article of commerce, and
obtain thereby such exclusive right to the
application as to prevent others inhabiting the
district or dealing in similar articles coming from
the district from truthfully using the same
designation.
Esselstyn, 114 P. at 121, quoting Delaware & Hudson Canal Co.
v. Cla.rk (1871), 80 U.S. 311, 20 L. Ed. 581. Owl creek is a.
geographical name by which a certain Wyoming stream is known.
It is also the name of the region or district through which
the stream of that name flows. As such, the name is
descriptive and cannot be appropriated as a trade name or
mark. Coal is a generic name descriptive in character and
purpose. It cannot be appropriated. as a. trade name or mark.
Coal denotes the generic article, while Owl Creek denotes the
place or locality of its production, and the two together
denote coal from Owl Creek. The common law and Montana
sta-tutory law deny exclusive appropriation of such a name.
Esselstyn is controlling in this case. Yellowstone is
the name of a river, county, and a National Park. Outfitters
is a name descriptive of services being offered in the region
around Yellowstone National Park. Together, the two denote
outfitting services in the Yellowstone area. Therefore,
"Yellowstone Outfitters" is primarily geographically
descriptive.
Tn ad.dition, appellant does not fall within the
exception to the rule against appropriation of geographically
descriptive names. That exception is codified at section
30-13-303(2), MCA, which states that even a primarily
geographically descriptive mark may be registered if it has
become distinctive of the applicant's goods or services.
Appellant has not shown that the name has become distinctive
of his services.
Therefore, we hold that the name "Yellowstone
Outfitters" is primarily geographically descriptive and not
subject to exclusive appropriation at common law or
registration by statute. The order of the District Court is
affirmed.
We Concur:
Justices