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