## Facts

- The Delaware and Hudson Canal Company mined and sold coal from Pennsylvania’s Lackawanna Valley and marketed it as “Lackawanna coal.”
- Coal from the Lackawanna Valley generally shared the same quality and appearance, and the market used “Lackawanna coal” to describe coal from that region rather than coal from a single producer.
- Clark, a coal dealer, sold coal mined by other producers within the Lackawanna Valley and labeled it “Lackawanna coal.”
- The Canal Company claimed an exclusive trademark-like right in “Lackawanna coal” based on longstanding use and alleged Clark’s labeling misled purchasers into believing they were buying the Canal Company’s coal.
- Clark argued “Lackawanna” was a geographic designation and his use was accurate because his coal came from the Lackawanna Valley.
- The Circuit Court for the Southern District of New York dismissed the Canal Company’s bill seeking an injunction; the Canal Company appealed.

## Issues

1. Whether “Lackawanna coal” was protectable as an exclusive trademark such that a court of equity could enjoin others from using it.
2. Whether a producer may appropriate a geographic name for goods to bar other producers from the same region from truthfully using the designation for similar goods.

## Decision

- The Supreme Court affirmed the dismissal of the bill.
- The Court held that trademark protection in equity requires an exclusive right to the name, not one that others may use with equal truth.
- Because “Lackawanna” was a geographic term accurately indicating origin, the Canal Company could not claim exclusive rights in “Lackawanna coal.”
- Absent false representation or fraud, equity would not enjoin Clark from truthfully describing his coal’s geographic origin, even if some buyers might mistakenly assume a particular producer.

## Legal Principles

- A name is entitled to equitable trademark protection only if the right to use it is exclusive and not equally true for others to use.
- Geographic terms that truthfully describe where goods originate generally cannot be monopolized as trademarks to exclude other regional producers or dealers.
- Equity will restrain false representations and fraudulent passing off, but will not prohibit truthful descriptions merely because they may cause purchaser mistake.
- Trademark law does not protect claims that would effectively create a monopoly over the sale of goods not produced by the claimant.

## Conclusion

The Court rejected an injunction because “Lackawanna coal” functioned as a truthful geographic description of coal from a known district, and a single seller cannot convert such a designation into an exclusive trademark absent deception or false representation by others.


Canal Co. v. Clark, 80 U.S. 311 (1872)