205 F. 302 | S.D.N.Y. | 1913
On the 26th day of June, 1906, on application filed by Henry L. Hughes June 26, 1905, the trade-mark “Ideal” was registered; proprietor, Henry R. Hughes, No. 54,282. The statement, declaration, and trade-mark filed and registered are as follows:
“United States Patent Office.
“Henry U. Hughes, of Chicago, Illinois.
“Trade-Mark for Hair Brushes.
“No. 54,282. Statement and Declaration.
“Registered June 26, 1906.
“Application Filed June 20, 1905. Serial No. 9,048.
“Statement.
"To A11 Whom It may Concern:
“Be it known that I, Henry L. Hughes, a citizen of the United States, residing at Chicago, in the county of Cook, and state of Illinois, and doing-business at No. 78 Monroe street, in said city, have adopted for my use a trade-mark, of which the following is a description:
"The trade-mark is shown in the accompanying drawing, wherein appears the word ‘Ideal.’
“This trade-mark has been continuously used in my business since December 21, 1886.
"The class of merchandise to which this trade-mark is appropriated is brushes, and the particular description of goods comprising said class upon which Í use said trade-mark is hair brushes.
“This trade-mark is usually displayed upon the handle of the brushes and*304 upon packages containing tlie goods by placing thereon a printed label on which the same is shown. Henry L. Hughes.
“Witnesses:
“John M. Gallagher.
“Maurice Archer.”
“Declaration,
“State of Illinois, County of Cook— ss.:
“Henry L.- Hughes, being duly sworn, deposes and says: That he is the applicant named in the foregoing statement; that he believes the foregoing statement is true; that he believes himself to be the owner of the trademark sought to be registered; that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use said trade-mark, either in the identical form, or in any such near resemblance thereto as might be calculated to deceive; that said trade-mark is used by him in commerce among the several states of the United States, and particularly between Illinois and Indiana, Illinois and Ohio, and between the United States and foreign nations, or Indian tribes, and particularly between the United States and England, and that the description, drawing, and specimens presented truly represent the trade-mark sought to be registered.
“Henry L. Hughes.
“Sworn to and subscribed before me, a notary public, this 3d day of April, 1905.
“[D. S.] ' John M. Gallagher.
“Trade-Mark.
“No. 54,282. Registered June 26, 1906.
“Henry D. Hughes,
“Hair Brushes.
“Application filed June 26, 1905.
“(Ideal.)
“Witness: Proprietor:
“J. M. Fowler, Jr. Henry L. Hughes,
“W. A. Johnston. By Owen H. Fowler, Attorney.”
In 1885, Mason Pearson, James Raper, and Frederick Gill invented and in England obtained a patent for a single bristle rubber cushion brush, and July 14, 1886, they applied for a patent thereon in the United States which was issued December 21, 1886. The distinctive features of this patented hair brush were the elastic domed or arched pad or sheet of elastic material supporting bristles “arranged each separately isolated,” and which bristles were secured therein by cement and a backing sheet, and which domed elastic pad or sheet carrying the bristles was held to the wooden or metal back of the brush by an undercut groove around and near the inner edge of the back, so as to form an air space between the back and such elastic pad or sheet carrying the bristles. By pressure on the bristles the air would be forced out of such air space through a passage.
Pearson at once commenced manufacturing and selling the brush in England under the name “Very.” In 1885, one Samuel Reid, a resident and citizen of the United States, visited England and remained until December 17, 1887. While there he became acquainted and quite intimate and friendly with Pearson. Just prior to leaving Reid was shown two of these brushes, made under the patent and bearing the mark “Very Brush” and also the words “London Patent.”
Reid communicated with the patentees and ascertained the terms on which the brushes could be purchased for sale in the United States. Reid, Shorediche, and Hurd thereupon had a die made in Chicago for stamping the brushes sold and shipped them for sale in the United States “Ideal.” Reid, Shorediche, and Hurd had labels printed to put on the cardboard boxes containing the brushes when put on sale here, which labels bore a cut of the brush and the word “Ideal.” All brushes were purchased of Raper, Pearson, and Gill absolutely and outright. There was no agency. In making in England the brushes to be sent Reid, pursuant to the understanding of the parties, the manufacturers stamped them: “The Ideal Brush, London, Patented.” This was the die, or identical with the die, designed and made in Chicago. In 1888, and early 1889, Reid, Hurd, and Shorediche did business and sold these brushes under the firm name “Anglo-American Novelty Company.” The firm advertised these brushes as “Ideal” and had cuts made, etc. In 1889, Reid bought out his associates, and later took in one Drinkwater, who soon went out, leaving Reid alone; but in 1893, he was joined in business with Henry L. Hughes. On or about May 1, 1889, and after Hurd and Shorediche had withdrawn, Reid received a license agreement from Pearson and Gill, then owners, granting to Reid an exclusive transferable license to sell throughout the United States hair and other brushes made by Pearson and Gill under United States letters patent No. 354,583.
In 1892, it came to the notice of Reid that one Gibson had had shipped to him, Gibson, some of these patented hair .brushes and was selling them, and also that his (Reid’s) selling agent was meeting in the market these patented brushes sold under the name “Perfect Penetrator” and “The Very Brush.” Thereupon Reid caused to be printed and circulated a notice of his rights and warning all persons against infringing them. From October 13, 1893, Reid and Henry L. Hughes did business in the selling of “Ideal” brushes only under the name “The Ideal Hair Brush Company.” Later Reid sold his interest to his brother, James M. Reid. In 1894, Hughes bought out the inter
“If you will take the proper and ordinary course open to you, viz., stop the sale of these goods by using the legal powers you possess, you will then find you will have no further trouble.”
Also March 5, 1896:
"We would suggest that your proper course is .to take legal proceedings. * * * You may find that, as the patent stands in our name, it will-be necessary, as a matter of legal form, to use our name in any legal process.”
In short, down to March 18, 1904, when Mason Pearson died and was succeeded by his son, Mason Pearson, Jr., and even later, the right of Hughes to the trade-mark “Ideal” was not questioned, but plainly recognized. The American patent expired December 21, 1903, and Hughes applied for his trade-mark “Ideal,” as stated, in June, 1905, for the purpose of protecting himself in his rights to this trademark “Ideal” as applied to hair brushes. Hughes notified Pearson of this action on his part, and sent him a copy of the certificate of registration. He also sent notices of this registration to all ports of entry and to the trade, and sent a copy of such notice to Pearson.
After the registry of the trade-mark Hughes went to England and an agreement was entered into as follows:
“Messrs. Mason Pearson, Royal Victor Place, Old Ford Rd., London, 13.
“August 4th, 1906.
“We, thp undersigned, manufacturers of brushes, parties of the first part, viz., Mrs. Mary Pearson and Mason Pearson, her son, joint owners of their factory, situated at Royal Arictor Place, Old Ford Rd., and Henry L. Hughes, party of the second part, of the city of Chicago’, Ill., U. S. A., party of the second part, do hereby covenant and agree with the said I-Ienry L. Hughes, of the second part, to grant to him the exclusive right to sell the following brushes of our manufacture in the United States and Canada, viz.: The brushes known as the Ideal hair brush (single bristle); also one known as Hughes’ Improved Ideal hair brush (double bristle); also a military hair brush (double'and single bristles) — for a period of twenty years (20 years) ■from this date. If the said Henry L. Hughes should die during, or prior to, the expiration of this contract, the trade-mark of the Ideal hair brush shall become the property of the said Mary Pearson and Mason Pearson, her son, jointly, or their assignee. The above contract is a transferable franchise on either side. Either party to this contract, wishing to sell, shall give the first option of purchase to the other party. Should any difficulty arise as to the value of the purchase, the matter shall be referred to arbitration. .
“Mary Pearson.
“Mason Pearson.
“Henry L. Hughes.
“Witness:
“Fred R. L. Rand,
“Clerk U.- S. Consulate General, London, England.”
“If you want us to free you from your contract, which prevents you from buying from any one else, we are perfectly willing to do so, oil condition that you allow us to sell in the United states wilder another name,’’ etc.
Thereupon Hughes refused to pay the increased prices and their relations ceased. It was a fair acceptance of the proposition of Pear-sou to end. the contract, then having 3 6 years to run, with the understanding that Pearson might sell in the United States under another name than “Ideal.” This letter was a recognition of Hughes’ right to the trade-mark as applied to these brushes. Hughes, of course, hasthe right to make and sell these brushes, the patent having expired, or to purchase them of any manufacturer and sell.
After this the Pearsons appointed the defendant, Alfred H. Smith Company, their sole agents for the United States for Ideal hair brushes, and defendant has continued to sell these brushes, using the trade-mark “Ideal.” Hughes had built up a large trade in “Ideal hair brushes,” and this use of the trade-mark by defendant had seriously injured such business.
The evidence in this case shows clearly that neither Hughes nor either of his predecessors was an agent of the Pearsons and their predecessors; that the adoption of the trade-mark “Ideal” as connected with these brushes was not for the benefit of or in the interest of the Pearsons and their predecessors, but of Reid, Hurd, and Shorediche in the first instance, and of their successors in this business. It was not a name given to.a patented article by the patentees or manufacturers, and by which it became known, but a name or trade-mark adopted by the predecessors of Hughes to designate and identify the particular hair brushes of a certain grade sold and dealt in by them. The affixing of this trade-mark in England by the manufacturers was done at the request oí Reid and his associates and their successors, and was understood to be fop the identification of the brushes made for and sold to Reid and his associates, to he sold or dealt in by them in this country. It was used and was to be used to identify the brushes purchased and sold by them, and not the brushes made by the manufacturers, Raper, Pearson, and Gill, and later by their successors, and finally by the Pearsons. If the Pearsons and their predecessors put this trade-mark “Ideal” on brushes of this grade, made and sold by them generally in Europe, or even in the United States, they were using the said designation improperly and in defiance and violation of the rights of Hughes and his predecessors.
After Alary Pearson and Alason Pearson had deliberately and with knowledge of its contents signed and executed the agreement of August 4, 1906, in which the right and ownership of the trade-mark in Henry Iv. Hughes is expressly recognized, and in which it is expressly provided that should Hughes die during or prior to the expiration of
The defendant presents four alleged defenses, and I quote the language of its counsel:
“First. That the word ‘Ideal’ is descriptive of the quality and' character of the goods, and therefore not properly the subject of trade-mark monopoly.
“Second. That assuming that the word ‘Ideal’ is sufficiently arbitrary to be the subject-matter of a trade-mark, that the same became publiei juris on the expiration of the patents covering said ‘Ideal’ brush, and that, therefore, it is incapable of monopoly as a trade-mark.
“Third. That if peradventure the court should hold that the word is subject-matter of trade-mark monopoly, and that it did not become publiei juris on the expiration of the patent, that then it follows, from the facts disclosed concerning the relation of the parties, that the said good will and trade-mark arising as the result of the sale of brushes under this name ‘Ideal’ belongs to Mason Pearson Bros, and none other, and that, therefore, Mason Pearson Bros, have a right to manufacture and sell said brushes to the defendant (Smith) under said trade-mark.
“Fourth. That assuming that the word ‘Ideal’ is descriptive, and therefore not susceptible of trade-mark monopoly, or assuming that it has become publiei juris as stated, defendants (Smith) contend that said word has in the United States acquired a secondary meaning, and that it now indicates to the purchasing public goods manufactured by Mason Pearson Bros, and none other, and that it would be a fraud on the purchasing public and a trespass on the rights of the said manufacturers to permit the use of the same in connection with the sale of brushes of the same class manufactured by another.”
“I, a, Of or pertaining to or consisting in ideas; 2, Existing only in idea; confined to thought or imagination; 3, In philosophy, regarding ideas as the only real entities; pertaining to or in the nature of idealism; 4, Arising from ideas or conceptions; based upon one ideal or ideals; manifesting, or embodying imagination; imaginative, as the ideal school in art or literature; an ideal statue or portrait.
*309 “II, n, 1, That which exists only in idea; a conception that exceeds reality: 2, An imaginary object or individual in which an idea is conceived to be completely realized; hence a standard or model of perfection; as the ideal of beauty, virtue, etc.; 3, A standard of desire; an ultimate object or aim: a mental conception of what is most desirable, as one’s ideal of enjoyment, one’s ideals are seldom attained.”
In Standard Paint Co. v. Trinidad Asph. Co., 220 U. S. 446, 31 Sup. Ct. 456, 55 L. Ed. 536, the question was whether “Ruberoid,” as applied to a. roofing material, was a valid trade-mark. The roofing material to wheih it was applied was in some respects like rubber, although it contained no rubber. “Rubberoid” means “like rubber.” It is a trade-name lor an “imitation of hard rubber; a compound word, rubber, and suffix, oid, meaning having the form or resemblance of the thing indicated, like,” etc. Applied to the roofing material in question, it was truly descriptive of the thing, which was like rubber, and any one had the right to use the word and apply it to anything in fact like rubber. The court held that it was descriptive, and that the fact the word was misspelled was immaterial, and hence such word was not the subject of a valid trade-mark.
In Waterman et al. v. Shipman et al., 130 N. Y. 301, 29 N. E. 111, the Court of Appeals held that the word “Ideal" as applied to a fountain pen, in association with the words “Waterman’s Fountain Pen,” so the trade-mark read “Waterman’s Ideal Fountain Pen,” was a valid trade-mark. The court said:
‘•While the word ‘fountain’ as applied to pens of a certain kind is a common appellative, the word ‘ideal’ as applied to fountain pens iS nondescriptive, arbitrary, and fanciful, and has no natural nor necessary application to a pen."
This case was approved in Cooke & Cobb Co. v. Miller, 169 N. Y. 475, 478, 62 N. E. 582, 583. When the word is generic, or descriptive of the article, its qualities, ingredients, grade, or characteristics, it is not the subject of a valid trade-mark. Waterman v. Shipman, supra; Selchow v. Baker, 93 N. Y. 59, 45 Am. Rep. 169; Cooke & Cobb Co. v. Miller, 169 N. Y. 475, 62 N. E. 582; Gilman v. Hunnewell, 122 Mass. 139; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 11 Sup. Ct. 396, 34 L. Ed. 997. The word “Ideal” has no application to hair brushes, except as we arbitrarily apply it, and the word is in no sense indicative or descriptive of the qualities or characteristics or merits of the brush, except that it meets the very highest ideal, mental conception, of what a- hair brush should be.
In Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 31 Sup. Ct. 456, 55 L. Ed. 536, the court reiterated the rule declared in Elgin Nat. Watch Co. v. Ill. Watch Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365, that:
“No sign or form of words can be appropriated as a valid trade-mark which, from the nature of the fact conveyed by its primary meaning, others may employ with equal right for the same purpose.”
The nature of the fact conveyed by the primary meaning of the word “Ruberoid” is that the roofing material is “like rubber.” Here the primary meaning of the word “Ideal” as an adjective is:
*310 “1, Of or pertaining to or consisting of ideas; 2, Existing only in idea, confined to thought or imagination.”
And as a noun:
“1, l’hat which exists only in idea, a conception that exceeds reality; 2, An imaginary object or individual in which an idea is conceived to be completely recognized; hence a standard or model of perfection; 3, A standard of desire, an ultimate object or aim, a mental conception of what is most desirable.”
Hence the nature of the fact conveyed by the primary meaning of the word “Ideal” is that there-is an “imaginary object” existing in “thought” or “ideas only,” something that “exceeds reality,” etc. This in no sense describes an existing thing, such as a hair brush. In Cooke & Cobb Co. v. Miller, 169 N. Y. 475, 477, 62 N. E. 582, 583, the words, “The Improved Favorite Letter and Invoice File, Best, Cheapest,” was held not a valid trade-mark; the word “Favorite” being the one relied on. The defendant used the words “Favorite Letter and Invoice File.” “Favorite” means:
“Kegarded with particular liking, favor, esteem, or preference.”
This word does not describe any particular characteristic, quality, or ingredient, but does indicate, in a way, a grade of invoice files, viz.,, that grade regarded with particular favor and preferred by users. The Court of Appeals held that this word “Favorite,” used in connection with the other descriptive adjectives, was used in a descriptive sense and as a descriptive word, and held:
“A word in common use cannot be adopted and appropriated as a trademark, unless applied to the article designated thereby in a nondeseriptive, arbitrary, and fanciful way, having no natural or necessary application to the article in question,” etc.
The word “Favorite” in that case was .not so used. In “this case the word “Ideal,” stamped on the article and on the labels on the boxes containing the brushes, may fairly be said to have been used in a “nondeseriptive, arbitrary, and fanciful way,” and in no way as a descriptive word. Of course, if the word is in its very nature and in its ordinary and primary meaning descriptive of the thing to which applied, it cannot be a lawful trade-mark in connection with such article.
“A party may be entitled io a trade-mark in a name which lie uses arbitrarily either on articles which lie nuumi'actures or has manufactured for him.”
As there must be a manufacturer before the merchandise passes to the hands of merchants for sale, and as a trade-mark may be adopted by a particular merchant to designate and distinguish the particular goods owned and sold by him, the trade-mark adopted here by Reid and his associates designated, not the brush as a patented brush or the manufacturer, but the particular brash sold by Reid and his successors; not the manufacturer or the origin of the brash, but the merchant who owned, sold, or dealt in those particular brushes in the United States. And it was not the name given to a patented brush to designate it from others not patented. The manufacturer in England put on this mark to distinguish the particular brashes the title of which was transferred to Reid and his associates, well knowing that such mark was to designate those so sold and no others, and was to indicate to the purchasers and users of those brushes so marked that they came from Reid and his associates, not as the manufacturers, but as owners and dealers merely.
“ ‘The meaning and use of a trade-mark is that some person dealing in goods, no matter of wliat kind, whether of his own manufacturo or not, having a certain defined shape, if lie stamps upon them some indication that that particular article is his, and his only, may thereby acquire so far an exclusive right to it as that no man may imitate his mark, and the legal right goes no further than that.’ Ford v. Foster, L. R. 7 Ch. App. 611, note, 27 L. T. N. S. 219, 20 W. R. 341, 41 L. J. Ch. 682.”
“The general rule as to Hie name applied to a patented article during the life of tiie patent is that upon the expiration of the paten! the public; acquires the right to make, use, and sell the patented article, and to distinguish it by the name which it bore during the life of the patent.”
Singer v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118, and the cases therein referred to, are cited as authority. But this patented hair brush never bore the name “Ideal” as its generic name during the life of the patent. It was not the name by which it was known, except as to one variety thereof sold in the United States
It may be said that when a person, by contract with the patentee under United States letters patent, who is the sole manufacturer of the patented thing, obtains the sole right to sell such article in the United States, and adopts a trade-mark which he uses on and in connection with a certain grade or style of the patented article, and such grade or style becomes known to the trade and users by that name and no other, he takes his.chances, and must expect that the right to the name will expire with the' patent; that otherwise he would obtain a monopoly of that particular thing after the expiration of the patent; that this is subject to the same objections that obtain against the patentee who adopts a name for the patented thing which becomes generic. Is not this so, even where the trade-mark was adopted and used to designate the seller merely, origin of sale, and not the origin or manufacturer, and not the thing patented, but is applied to a class or style only of the patented article, and then not universally, but in our country only. In Singer Manufacturing Co. v. June Mfg. Co., 163 U. S. 169, 199, 16 Sup. Ct. 1002, 1014 (41 L. Ed. 118), Mr. Justice White, who delivered the opinion of the court, said:
*313 “The result, then, of the American, the English, and the French doctrine universally upheld is this: That where, during the life of the monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has. become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created. Whore another avails himself of this public dedication to make the machine and use the generic designation, he can do so in all forms, with the fullest liberty, by affixing such ñamé to the machines, by referring to it in advertisements, and by other means, subject, however, to the condition that the name must be so used as not to deprive others of their rights, or to deceive the public, and.. therefore, that the name must he accompanied with such indications that the thing manufactured is the work of the one making it as will unmistakably inform the public of that fact.”
The question is not free from difficulty, and the answer is not free from doubt. It cannot be questioned that this style or form of this patented brush patented under the United States laws became known throughout the United States as “Ideal,” or “Ideal Brush,” and as the brush sold by Hughes and his predecessors. Hughes and his predecessors so intended, and it was done by and with the consent of the patentees, from whom solely Hughes derived his exclusive right to sell the brush' in the United States and Canada.
Mr. Justice White quoted and approved Pouillet, Brevets d’lnvention, § 329, p. 280:
“In principle, a surname is inalienable, and each one keeps the imprescriptible ownership in it. We know, however, that when the name of the inventor has become the designation of the thing patented, it belongs to every one, at the expiration of the patent, to make use of this designation.”
May we not well inquire, if this be so, that is, if the name of the inventor applied to the patented thing belongs to every one when the patent expires, how it is that the arbitrary name applied to the patented thing by the one having the sole and exclusive right to sell it in the country where patented, and by which name it becomes known there, does not pass to the general public with the expiration of the patent? The only answer I can find is that after the expiration of the patent, as well as before, the Pearsons were the sole manufacturers, and as such they could and did make a contract with Hughes, giving him the sole right to sell that article, no longer protected by the patent, in the United States. As such sole dealer in that article, he had the right to adopt a trade-mark, and did continue and register the name “Ideal,” which had been his trade-mark for years. But could he then adopt and register as his trade-mark, connected with this particular style of brush, now freed from the patent, the name which designated it in the United States before the patent expired? Had not •that name “Ideal,” connected with this style of brush, become public property to the extent that it could no longer be appropriated as a trade-mark by any one in connection with the particular brush ? Having the sole right to sell throughout the United States, Hughes and his predecessors attached this name to the article, and throughout the United States it became known by that name. Hughes is responsible for that. So long as the patent was in force, it was unnecessary to register the name “Ideal” as a trade-mark, as the patent was protection against sales of that brush in the United States by others, wheth
But it is said that the Pearsons recognized the trade-mark as valid and assented to its registry, and therefore cannot use it. Does that validate the trade-mark, if invalid without such recognition and assent? Clearly not. Does that mere assent and recognition estop the Pearsons to .use it ? I think not. . But it is said the Pearsons gave Hughes a 20-year agreement for the exclusive sale of such brush made by him in the United States, and Hughes agreed to purchase all his brushes of the Pearsons, and in consideration of being released it was agreed that the Pearsons might sell these brushes in the United States under some other name; that is, Hughes surrendered his right to the exclusive sale of these brushes in the United States, provided and on condition the Pearsons would sell the brush under some other name, if they sold at all, in the United States. Can the Pearsons be enjoined from violating this agreement? There is no full, complete, and adequate remedy at law clearly. And to enforce it át law an innumerable number of suits at law will be necessary.
Again, the complainants contend that Hughes had the right to register this trade-mark under the Trade-Mark Act of February 20, 1905 (33 Stat. 724, c. 592 [U. S. Comp. St. Supp. 1911, p. 1459]), as Hughes had exclusively used this trade-mark “Ideal” for the period of 10 years next preceding the passage of that act. That act superseded Act March 3, 1881, c. 138, 21 Stat. 502 (U. S. Comp. St. 1901, p. 3401), and in section 5, after providing what marks, etc., may be registered and what may not be, states as follows:
“And provided further, that nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations or among the several states, or with Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from whom he derived title, for ten years next preceding” the passage of this act.
The meaning and effect of this proviso has been adjudicated by the Circuit Court of Appeals in this (the Second) circuit. Thaddeus Davids Co. v. Davids, 178 Fed. 801, 102 C. C. A. 249. It is there Held in substance and effect that under the quoted 10-year clause any word or mark actually and exclusively used as a trade-mark of the applicant or of his predecessors from whom he derived title for 10 years next preceding the passage of the act, February 20, 1905, is entitled to registration and protection as a trade-mark notwithstanding the exceptions and prohibitions in the preceding clauses of the section. The question there was over the validity of the registration of the name “Davids.” Section 5 of the said act of February 20, 1905, provides, among other things:
“Provided that no mark which consists merely in the name of an individual, firm, * * * shall be registered under the terms of this act.”
Here was a clause absolutely prohibiting the registration of the name “Davids,” but for the 10-year clause quoted above. The court
“If, then, the name has validity as a registered trade-mark it is by virtue of the provisions of section 5 of Trade-Mark Act Feb. 20, 1905), * * ” and the 10-year clause thereof upon which the complainant relies follows. * ■:= s The act makes a mark actually and exclusively used the requisite! period entitled to registration as a trade-mark. And if it is entitled to registration it is entitled to protection. We are unable to appreciale the distinction sought io be drawn by ihe defendant between the right to register a trade-mark and the right to protect it. * * * In our opinion, an interpretation of the act which renders the 10-year clause of no practical effect should he avoided, unless absolutely necessary. Undoubtedly public policy would prevent the registration as trade-marks of marks consisting of imin’oral or scandalous matter, or of flags or coats of arms. It may well be that the same principle would prevent tile registration of trade-marks simulating those used by others. But with respect to names, descriptive words, and geographical terms, we are of the opinion that the proviso prevents their registration if they ‘have been in use for less than 10 years, but that the 10-year clause entitles them to registration if they have been actually and exclusively used for more than that period before the passage of the act.”
The Circuit Court of Appeals in the Davids Case refers to In re Cahn, Belt & Co., 27 App. D. C. 173, where it was explicitly held and decided that the proviso quoted does not permit or authorize the registration of marks or names the registration of which is prohibited by ihe prior clauses of section 5, and after stating that the court, liad so held in that case declared its inability to follow that case, as no practical effect could be given to the 10-year clause if the statute were so construed, and then held, as already quoted:
“But with respect to names, descriptive words, and geographical terms, we are of ¡lie opinion that the proviso prevents their registration if they have been in, use, for less than JO years, but that the 10-year clause entitles! them to registration if they have been actually and exclusively used for more than that -period before the passage of the act.”
Here, the name “Ideal” had been used by Hughes and his predecessors in title for moie than the 10 years next preceding the passage of the act actually and exclusively as his trade-mark. It was a trademark of the applicant, and there is no statute, or clause in the statute referred to, forbidding its registration. Clearly the expiration of the patent in 1903 had no greater potency to prevent the registration of this trade-mark by Hughes, and its protection as such by the courts, than does the express provisions of the statute referred to to prevent the registration of “marks consisting merely in the name of an individual firm * * * or merely in words or devices which are descriptive of the goods with which they are used,” etc., and which statute says such marks, words, etc., shall not be registered. This word ".Ideal,” under the facts and circumstances of this case, was entitled to registration, and, being entitled to registration by Hughes, is entitled to protection. Thaddeus Davids Co. v. Davids, supra, 178 Fed. 804, 102 C. C. A. 252, where the court held:
“And if it is entitled to registration it is entitled to protection.”
As interpreted by tlie Circuit Court of Appeals, the 10-year clause referred to provided for the registration of every mark and word
As to the cross-bill, it must be dismissed in any event as unauthorized. By section 22 of the Trade-Mark Act a suit in equity may be instituted whenever there are “interfering registered trade-marks,” etc. Whenever a person deems himself injured by the registration of a trade-mark, by section 13 of the act he may apply to the Commissioner of Patents to cancel same. This is a complete and adequate remedy.
The cross-bill- will be dismissed, and the complainants will have <a decree as prayed, with costs.
