281 F. 186 | E.D. Pa. | 1922
The plaintiff applied for the registration o’f a trade-mark. This the Commissioner refused to register. One purpose of the present bill is to secure an order under R. S. § 4915, authorizing the Commissioner of Patents to make the registration and issue a certificate thereof. No question of the right of the plaintiff to maintain a bill for this purpose is raised.
A second purpose of the bill is to secure an adjudication in this court that the defendant has no lawful right to the trade-mark to which it lays claim, and to adjudge that the registration allowed by the Commissioner be “canceled.” It is to this part of the bill of complaint the defendant takes exception. The grounds of exception are, in one aspect of the criticism made of the bill, that no cause of action is disclosed, and that, in another aspect this court has no jurisdiction to adjudicate the rights of the parties.
It is in consequence argued that this is the prescribed, and because of this the exclusive, method of procedure. The same rules of practice and procedure which govern in the case of an appeal in a patent case are to govern in trade-mark cases, but this is limited to appeals from the Commissioner which go to the proper court in the.District of Columbia. There is no specific allowance of an appeal in the _form_ of a bill in equity in the case of the issuance of certificates of registration as there is in the case of a refusal to issue.
The two conclusions which the defendant has reached would seem to follow. One is that no fact averments have been made upon which this second ground of complaint is founded, other than the issuance of the certificates by the Commissioner. The latter averment would give a cause of action, but it is wholly in the nature of and by way of appeal, and that appeal must be made to a court in the District of Columbia, and is not to be taken to any District Court which might happen to have jurisdiction of the parties.
This supplies us with a good reason for not determining now the questions raised. The bill filed by the plaintiff may well be viewed as a bill raising two causes of complaint. One is in effect a complaint of the act of the Commissioner of Patents in refusing to issue a certificate of registration of the trade-mark which plaintiffs claim; the other is a complaint of the use of. a trade-mark by the■ defendant which the
The motion to dismiss is denied, with leave to the defendant to raise the same question in any answer which it may file to the bill of complaint.