U.S. Supreme Court
Castner v. Coffman, 178 U.S. 168 (1900)
Castner v. Coffman
Argued January 23-24, 1900
Decided May 21, 1900
178 U.S. 168
On the facts as detailed in the opinion of the Court, it is held that there was no error in the decree of the court below.
This suit was commenced on March 12, 1897, in the United States Circuit Court for the District of West Virginia, sitting in equity. On the date mentioned, a bill of complaint was filed on behalf of Samuel Castner, Junior, and Henry B. Curran, co-partners, trading under the firm name of Castner & Curran. The defendant named in the bill was W. H. Coffman, doing business under the name of Pocahontas Coke & Coal Company and W. H. Coffman Coke Company. The relief prayed was substantially that the defendant might be perpetually restrained from using or imitating the name "Pocahontas" in connection with the selling, advertising, or offering for sale, of coal. The relief thus asked for was based upon the averment that the word "Pocahontas" was a trademark for coal, which trademark was owned by the complainant firm, and, besides, that the word in question had come in the course of business to designate the coal offered for sale by the complainants, and that the use of the name by the defendant was calculated to deceive the public into believing that the coal dealt in by him was coal which had been inspected and graded by the complainants, would thus operate to defraud the complainant, and constituted undue and unlawful competition in trade.
Affidavits and exhibits were filed with the bill in support of a motion for an injunction. A demurrer to the bill having been overruled, the defendant filed an answer accompanied by affidavits and exhibits in opposition to the motion for an injunction. Several affidavits in rebuttal were thereupon filed on behalf of the complainants. Upon the record thus made, the motion for chanroblesvirtualawlibrary
an injunction was heard, and after consideration by the court, it was decreed as follows:
"That the defendant in his own name, and in the name of the Pocahontas Coke & Coal Company, and in the name of the W. H. Coffman Coke Company, and his servants, attorneys, associates, confederates, agents, and workmen, and each and every of them, be and the same are restrained and inhibited from using the name 'Pocahontas' or 'Pocahontas Flat Top' in connection with his business, the court being of the opinion that the complainants have a right to use the said word 'Pocahontas' for the purpose of indicating that the coal was from the Pocahontas field, and that the complainants have the sole right to use said word as indicating the character of coal they sell. But this injunction is not to restrain or inhibit the defendant or his agents from advertising, offering for sale, or selling coal from what is known in Virginia, or West Virginia, as the Pocahontas coal field, or advertising the coal as so mined and produced from that field, and this injunction shall not apply to transactions of the defendant already concluded by actual shipments of coal."
The defendant appealed to the Circuit Court of Appeals for the Fourth Circuit. Among the assignments of error filed was the following:
"II. The court erred in rendering any decree at all until the merits of the said cause, as put in issue by the pleadings, were fully developed by proofs adduced in the proper order of chancery proceeding and practice."
The circuit court of appeals reversed the decree of the circuit court and remanded the cause with directions to dismiss the bill. It was held that the complainants had no trademark in the word "Pocahontas," that they were not entitled to the exclusive use of that word to designate the coal sold by them, or its character or quality, but, on the contrary, that the word "Pocahontas" indicated coal mined in the Pocahontas coal field, and that all the producers of that region had the right to use it in common with the complainants. The court held that the proof did not show that the defendant had practiced any deception on the public, or that he had perpetrated any fraud upon the appellees. chanroblesvirtualawlibrary
Before the mandate issued, however, a rehearing was applied for and the reviewing court was asked to provide in the mandate, after reversing the order granting a preliminary injunction, that the parties should "proceed to take their proofs in order that the cause may thereafter be heard upon pleadings and proofs, to the end that a final decree may be entered." This petition for a rehearing was denied, the court stating:
"We are clearly of the opinion not only that complainants below are not entitled to an injunction, but also that there is no equity in their bill, and that therefore it will be a useless expenditure of time and money, and cause fruitless delay, to take the evidence mentioned in the petition for a rehearing."
The cause was then brought to this Court by writ of certiorari.