## Facts

- American Waltham Watch Company was the first watch manufacturer in Waltham, Massachusetts and developed a strong reputation for watches associated with the designation “Waltham.”
- Through long use, “Waltham,” though originally geographic, came to identify plaintiff’s watches in the public mind (secondary meaning).
- United States Watch Company later manufactured watches in Waltham and used “Waltham” and “Waltham, Mass.” on watch plates (and related markings) and in advertising.
- A preliminary injunction barred defendant from advertising using the combined phrases “Waltham Watch” or “Waltham Watches.”
- The trial judge found defendant’s use of “Waltham” had the effect and intended effect of deceitfully diverting plaintiff’s customers, and that it was practicable to distinguish defendant’s watches from plaintiff’s.
- The remaining dispute was whether defendant could place “Waltham” or “Waltham, Mass.” on its watch plates without additional wording that clearly distinguished its watches from plaintiff’s.

## Issues

1. Whether a later manufacturer located in Waltham may use the geographic term “Waltham” (or “Waltham, Mass.”) on its watches when that term has acquired secondary meaning identifying plaintiff’s watches.
2. If some use is permitted, whether equity may require an accompanying statement that clearly distinguishes defendant’s watches from plaintiff’s to avoid consumer confusion and deceptive diversion of trade.

## Decision

- The court upheld injunctive relief barring defendant from using the combined phrases “Waltham Watch” or “Waltham Watches” in advertising.
- The court further enjoined defendant from using “Waltham” or “Waltham, Mass.” on the plates of its watches unless accompanied by a statement that clearly distinguishes defendant’s watches from those made by plaintiff.
- The court treated the findings of secondary meaning, deceptive effect and intent, and practicability of distinguishing language as sufficient grounds for tailored equitable relief.

## Legal Principles

- A geographic term may receive protection in unfair competition where, by long use, it has acquired a secondary meaning identifying a particular producer’s goods.
- When a designation is used with the effect and intended effect of deceiving purchasers and diverting trade, equity may restrain the use to prevent passing off.
- Even if a business has an interest in stating a truthful location, that interest is limited when the manner of use is likely to mislead; a court may require clear qualifying language where it is practicable to distinguish the parties’ goods.

## Conclusion

The court held that because “Waltham” had acquired secondary meaning for plaintiff’s watches and defendant’s use was found to cause and intend deception, defendant could not use “Waltham” (or “Waltham, Mass.”) on watch plates without a clear accompanying statement distinguishing its watches from plaintiff’s, and could not advertise using “Waltham Watch” or “Waltham Watches.”


Am. Waltham Watch Co. v. U.S. Watch Co., 173 Mass. 85, 53 N.E. 141 (1899)