48 App. D.C. 437 | D.C. Cir. | 1919
delivered the opinion of the Court:
These are cancelation proceedings brought by B. S. Howard Company, a corporation, against the Baldwin Company, a corporation. One is to cancel the certificate of registration of a trademark consisting of the word “Howard” registered by the Baldwin Company on October 17, 1905, and the other is to cancel the certificate of registration for a trademark consisting of the word “Howard” in connection with the initials “V G P Co” arranged in monogram, registered by the Valley Gem Piano Company on March 8, 1898, and now owned by the Baldwin Company. Both marks were registered as trademarks for pianos.
These cases were consolidated and heard together in the Patent Office, and will be so considered here. Prom the decision
It appears that appellant corporation was organized in 1902, and that for a number of years prior to that R. ¡3. Howard, the organizer of the corporation, had been an agent for the sale of pianos for the Baldwin Company. During that period, Howard sold pianos extensively throughout the country bearing the trademark “Howard.” It appears, however, that piános similarly marked were extensively sold by the Baldwin Company through other agencies than R. S. Howard. After its organization, the Howard Company sold pianos marked on the fall-board “R. S. Howard Company,” and advertised itself extensively as manufacturers of “Howard” pianos.
This resulted in a suit by the Baldwin Company against the Howard Company for unfair competition in the United States district court for the southern district of New York (238 Fed. 489), resulting in a decree restraining the Howard Company from making or selling pianos bearing the word “Howard” alone, but permitting it to use the marks “R. S. Howard Company” and “Robert ¡3. Howard Company.” The decree was affirmed by the United States circuit court of appeals (151 C. C. A. 230, 288 Fed. 154).
While an attempt was made to involve the present proceeding in that case, the court refused to interfere with its course in the Patent Office. The district judge, in his opinion, said: “I am inclined to think if this court has the power, it is inadvisable to seek to prevent the continuance of the cancelation proceedings in the office. It is plain to me ihat the object of these proceedings is primarily to get rid of something which constitutes an obstacle to the extension into certain foreign countries (e. g., Cuba and Uruguay) of the business of the R. S. 'Howard Company. I doubt whether under our law the.name ‘Howard,’ being a not infrequent surname or place name, can be appropriated as a strict trademark. I have no doubt that the original registration in 1898 was made with the full knowledge and consent of Mr. Robert S. Howard. He admits the knowledge; the consent is implied from the course of business. But if he could
The court decisions can be dismissed from further consideration, since they were confined solely to the question of unfair competition, a matter of no concern in this proceeding, either by way of estoppel or otherwise. We are here dealing with the validity of the registration of the marks in question, in a proceeding in which the Commissioner of Patents is vested by statute with exclusive jurisdiction. Section 13 of the Trademark Act of February 20, 1905, provides “that whenever any person shall deem himself injured by the registration of a trademark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration thereof. The Commissioner shall refer such application to the examiner in charge of interferences, who is empowered to hear and determine this question and who shall give notice thereof to the registrant. If it appear after a hearing before the Examiner that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the Examiner shall so decide, the Commissioner shall cancel the registration. Appeal may be taken to the Commissioner in person from the decision of the Examiner of Interferences.” [33 Stat. at L. 728, chap. 592, Comp. Stat. 1916, § 9198, 9 Fed.
Unquestionably, the Baldwin Company was the first to make a trademark use of the word “Howard,” but in our view of the ease that is of no importance. The sole question here is, Was the Baldwin Company entitled to the exclusive use of this mark on the date of its application for registration ? If not, has the Howard Company been injured by the registration of the mark ? The right to register the name of a person or corporation, except under conditions not present in either of these cases, is expressly forbidden. Wm. A. Rogers v. International Silver Co. 31 App. D. C. 110. The mark in the Baldwin case; and the dominating feature of the mark in the Valley Gem case is not only a common surname, but the name of appellant corporation, either of which is sufficient to prohibit the right of registration or to form the basis of an action for cancelation. As was said by Mr. Chief Justice Fuller in Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118, 134, 49 L. ed. 972, 984, 25 Sup. Ct. Rep. 609: “But it is well settled that a personal name cannot be exclusively appropriated by anyone as against others having a right to use it; and as the name 'Remington’ is an or-, dinarv family surname, it was. manifestly incapable of exclusive appropriation as a valid trademark, and its registration as such could not in itself give it validity. Brown Chemical Co. v. Meyer, 139 U. S. 540, 35 L. ed. 247, 11 Sup. Ct. Rep. 625; Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002; Elgin Nat. Watch Co. v. Illinois Watch Case Co. 179 U. S. 665, 45 L. ed. 365, 21 Sup. Ct. Rep. 270.”
It will be observed that the statutory prohibition relates back to the date of adoption. If it was then “incapable of exclusive appropriation,” its validity may be assailed by anyone possess
It follows that, at the date of the adoption of the mark by both the Valley Gem and Baldwin Companies, the word “Howard” was a surname in common use, and not available to either, for registration as a trademark. But the statute goes further, and requires that the registrant must be entitled to the use of the mark at the date of his application for registration thereof. When the Baldwin Company applied for the registration of the word “Howard,” the Howard Company was in existence and a direct competitor of applicant in the piano business. Hence, the registration of its competitor’s name was sought and secured in direct violation of the express terms of the statute.
But it is said that the Howard Company has not shown that it has been injured by the registration of its name. The element of damage enters into the right to challenge the registration of a technical trademark either in an opposition or a can
Section 13 of the Act of 1905 provides a remedy which applies to registrations existing at the date of its passage, as well as to registrations made subsequent to its enactment. In Black Betsy Coal & Min. Co. v. W. J. Hamilton Coal Co. 197 Off. Gaz. 998, Commissioner Ewing said: “I see no reason why § 13 of the Trademark Act of 1905 should not be held to apply to trademarks registered under the earlier act. Section 13 does not alter in any way the right of a registrant to his trademark, but merely provides a new remedy in case a trademark is regisistered by a party who never had or who has abandoned any right thereto. The language in sec. 13 is broad enough to cover registrations under the earlier act, and there is no reason for limiting its plain meaning.”
The same interpretation was placed upon the statute by this court in Stamatopoulos v. Stephano Bros. 41 App. D. C. 590, where we said: “The registration of trademarks is regulated entirely by statute. There is no such property right acquired by registration as either forbids regulation or abolition by a subsequent act of Congress. Section 13 relates entirely to procedure in the Patent Office. The Act of 1881 did not provide for challenging a registration by a proceeding for cancelation. The Act of 1905 for the first time furnished this speedy and sensible reanedy. Being merely remedial, and a matter of procedure, it was within the power of Congress to make it apply to all marks registered in the Patent Office. Intention to make it apply only to future marks is not indicated in the later act.
The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required. Reversed.
A petition for rehearing was denied March 29, 1919, and the opinion and judgment withheld pending decision of the Supreme Court of the United States on petition for a writ of certiorari.