211 F. 401 | 8th Cir. | 1914
Lead Opinion
This suit was brought by the appellee, Caroline Henriette Gamier, to enjoin the appellant, Tekla Rossmann, from infringing a registered trade-mark, to restrain'her from unfair trade, and for an accounting, and resulted in a decree as prayed.
November 1, 1910, Caroline Henriette Gamier registered in the Patent Office as a trade-mark for cordials the following:
She alleged in her statement that she was a citizen of France residing at Enghien-les-Bains, France, and the trade-mark had been used in her business and that of her predecessor, Andre Georges Gamier, since on or about the 1st day of August, 1872. She alleged in her declaration that said trade-mark had been registered in France and that the same had been in actual use as a trade-mark of the appellant and her predecessor from- whom title was derived for ten years next preceding the passage of the act of February 20, 1905, and to the best of her knowledge and belief
In the view taken by the court it is sufficient to say that all the matters which will be passed upon arise under the trade-mark law, and it is therefore unnecessary to consider this question.
The first trade-mark legislation passed by Congress was in 1870, •chapter 230 of the Laws of the Forty-First Congress, and is found in 16 Stats. 198. That was entitled “An act to revise, consolidate, and .amend the statutes relating to patents and copyrights.”
Sections 77 to 84 of this act referred exclusively to trade-marks. There was nothing in the act to refute the presumption quite apparent from its title that it was enacted.by Congress in the supposed exercise of its powers under the eighth clause of the eighth section of the first article of the Constitution.
“Sec. 8. The Congress shall have power: * * * To promote the progress •of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
In 1876/ 19 Stats. 141, Congress passed an act to punish the counterfeiting of trade-mark goods and the selling or dealing in such goods. ’This act was for the further security or protection of trade-mark hold<ai*e rmn^r thp iicf* ot |X/0
In the Trade-Mark Cases, 100 U. S. 82, 25 L. Ed. 550, the Supreme Court held that no power to pass trade-mark legislation was conferred by the provision of the Constitution quoted and that, as the laws of 1870 and 1876 made no distinction between trade-marks used in intrastate commerce and those used in foreign commerce, interstate commerce, and commerce with the Indian tribes, both of said acts were necessarily void. This decision was rendered in October, 1879, and it was in conformity with what was supposed to have been laid down by the Supreme Court in those cases that all the subsequent legislation upon the subject has been enacted. . It is probably true that the con■stitutionality of the more recent legislation has never been expressly passed upon by the Supreme Court of the United States, but that legislation has now stood for more than 30 years. It has been enforced by the United States Supreme Court and all the other courts of the United States, and we see no reason to suppose the law is not sustainable under clause 3 of s'ection 8 of article 1 of the Constitution:
“The Congress shall have .power: * * * To regulate commerce with foreign nations, and among the several states, and with the Indian tribes.”
“Whether the trade-mark bears such a relation to commerce in general terms as to bring it within congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave undecided.”
And again:
“In what we have here said we wish to be understood as leaving untouched the whole question of the treaty-making power over trade-marks, and of the duty of Congress to pass any laws necessary to carry treaties into effect.”
In Elgin National Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 673, 21 Sup. Ct. 270, 273 (45 L. Ed. 365), the Supreme Court said:
“The term (trade-mark) has been in use from a very early date, and, generally speaking, means a distinctive mark of authenticity, through which the products of particular manufacturers or the vendible commodities of particular merchants may be distinguished from those of others.”
Surely if this be a correct definition of a trade-mark regulations for the registering and protection of them in connection with commerce, interstate or foreign, or with the Indian tribes, is legitimate legislation' in connection with the regulation of such commerce. Surely if such marks are distinctive badges of authenticity it is as much a part of the regulation of interstate commerce to regulate them as are the branding features under the pure food law.
This court cannot "therefore hold that such- legislation is unconstitutional en bloc.
“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.” 33 Stats. 726, § 5.
It is contended that at least this so-called ten-year clause is unconstitutional. It was held otherwise in Thaddeus Davids Co. v. Davids et al., 178 Fed. 801, 102 C. C. A. 249; Id. (C. C.) 190 Fed. 285; Id, 192 Fed. 915, 114 C. C. A 355; Coca-Cola Co. v. Deacon Brown Bottling Co. et al. (D. C.) 200 Fed. 105; Coca-Cola Co. v. Nashville Syrup Co. (D. C.) 200 Fed. 153, 157; Hughes et al. v. Alfred H. Smith Co. (D. C.) 205 Fed. 302; In re Cahn, Belt & Co, 27 App. D. C. 173.
The last case presents a question 'of construction but not one of constitutionality.
It is apparent that a technical trade-mark is entitled to registration without reference to the ten-year clause, and, if none but technical trade-marks are entitled to be registered under it, then it might as well have been omitted.
It will be observed that section 5 provides that any. mark, not trademark, which was in actual and exclusive use as a trade,-mark for ten years before the passage of the act, may be registered. This contemplates that any mark which was not a technical trade-mark, but which had been actually and exclusively used by the applicant or his predecessor for the required time could be registered as a trade-mark. This
This seems to have been fully answered in Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60, where it is said:
“It is not necessary to constitute an infringement that every word of a trade-mark should be appropriated. It is sufficient that enough be taken, to deceive the public in the purchase of a protected article. * * * The reports are full of cases where bills have been sustained for the infringement of one of several words of a trade-mark.”
In that case it was held that a trade-mark upon bitter waters of “Hunyadi-Janos” was infringed by the use of the words “Hunyadi Matyas” on similar waters.
The defendant contends there is no evidence that she has sold the cordial in question except locally in Missouri. She ignores the fact that she filed the following in the trial court:
“And for answer to the interrogatory numbered 1 contained in said bill of complaint this defendant says that she has never sold or caused to be sold any cordials or liquor or goods of similar descriptive properties under the trademark Abricotine; but that she has sold such goods bearing a label having the word Abricotine thereon as a descriptive word in association with other matter as hereinbefore stated and that such goods have been sold in commerce between the several st.ates of the United States since the 1st day of November, 1910.”
The appellee seems to place some reliance on the fact that she claims to be a citizen of France and, as we understand it, claims certain rights under the trade-mark convention proclaimed July 6, 1869; but owing to doubt as to the sufficiency of the evidence to show her citizenship of France, to the absence of proof of compliance with the terms of that convention, and doubts as to the effect upon such convention of the provisions of the act of 1905, we leave all questions as to whether she has any rights under said convention undisposed of.
Section 28 of the act- of 1905, 33 Stats. 730, is as follows:
“Sec. 28. That it shall be the duty of the registrant to give notice to tho public that a trade-mark is registered, either by affixing thereon the words-*407 ‘Registered in U. S. Patent Office,' or abbreviated thus, ‘Reg. XT. S. Pat. Off.,’ or when, from the character or size of the trade-mark, or from its manner of attachment to the article to which it is appropriated, this cannot be done, then ,by affixing a label containing a like notice to the package or receptacle wherein the article or articles are inclosed; and in any suit for infringement by a party failing so to give notice of registration no damages shall be recovered, except on proof that the defendant was duly notified of infringemeht, and continued the same after such notice.”
It does not appear that in the use of the trade-mark the appellee ever complied with the requirement that she give notice to the public by affixing thereto the words “Registered in U. S. Patent Office,” or “Reg. U. S. Pat. Off.,” nor on a separate label, nor is there any evidence that any notice was ever given appellee of the infringement.
It follows that no damages can be recovered and no use would be subserved by an accounting.
The writer fully concurs in the separate opinion of-VAN VALKENBURGH, District Judge.
The decree of the District Court is therefore affirmed as to all but the awarding of an accounting, but the case is remanded, with directions to the court to set aside so much of the decree as grants such an accounting.
Concurrence Opinion
(concurring). Counsel for appellant in their brief raise the following points:
1. The certificates of trade-mark are invalid and inoperative as evidence in this cause: (a) Because the trade-mark act of February 20, 1905, is unconstitutional and inoperative; (b) because said act limits infringements to such as occur in interstate commerce.
2. Said certificates of registration do not purport to protect the use of the word “Abricotine.”-but only the signature and initials on the shield. ,
3. Use in interstate commerce was not shown, and the jurisdiction therefore failed.
• 4. The word “Abricotine” is descriptive and incapable and adoption as a trade-mark.
5. The court erred in awarding an accounting of profits.
It is doubtful whether the assignments of error are broader than this; but, if so, such as are not included within the points relied on in the brief may be treated as abandoned. In the argument, beginning on page 5 of appellant’s brief, the contentions are still further limited. It is evident that appellant elected to stand upon, first, unconstitutionality of the 10-year clause; second, failure of proof as to use in interstate commerce; third, the failure of the certificates to protect the word “Abricotine” apárt from the’ signature, initials, and shield; fourth, the award of accounting.
We hold the act of 1905 to be constitutional. The mark was regularly registered under that act; this makes a prima facie case of ownership in appellee. Under that act the declarant is not limited to marks which are confessedly the subject of technical trade-mark; but terms not otherwise admissible as such are protected, provided the ten-year exclusive use of the mark is shown. This showing was made in the pre
When we uphold the act of 1905, many of the vexatious questions presented are removed. In the record it is conceded that the infringement occurred in interstate commerce. Registration under the act of 1905 established in appellee the ownership of a trade-mark, which stands for construction as any technical statutory mark. In Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19-33, 21 Sup. Ct. 7, 45 L. Ed. 60, it was established that it is not necessary to constitute an infringement that every word of a trade-mark should be appropriated. It is sufficient that enough be taken to deceive the public in the purchase of a protected article. As this record stands, it would appear that the word “Abricotine” was an essential and vital part of the mark. This disposes of all the contentions of appellant except that respecting the accounting, and this point we have resolved in her favor.
Dissenting Opinion
(dissenting). This is a case of technical, statutory trade-mark, not of unfair competition. The trade labels of.defendant are so unlike complainant’s no one could be deceived. The sole resemblance is in the use of the word “Abricotine” as the name of the cordial or liqueur which both sell. In no other way is it claimed defendant trespasses. Complainant relies on two registrations of a trademark in the Patent Office, one November 6, 1906, the other November 1, 1910. The latter trade-mark is shown in the foregoing opinion to consist of a shield outline inclosing the initials “P. G.,” the word “Abricotine,” and the name “P. Gamier” in script. The former is precisely like it, gxcept that it contains in addition the words, “Liqueur extraite du Fruit l’Abricot,” facsimiles and descriptions of certain medals and the address, Enghien-les-Bains. Complainant evidently-sought by each registration to avail herself of the provision of the act of February 20, 1905 :
“That nothing herein shall prevent the registration of any mark * * * which was in actual and exclusive use as a trade-mark of the applicant or his*410 predecessors from whom he derived title for ten years next preceding the passage of this act.” 33 Stat. 725, § 5.
The -first application, for registration lacked averment of the ten years’ actual and exclusive use and was probably deemed insufficient under the above provision, so_ in the second the actual use for the ten years was stated, and it was averred that to the best of the applicant’s knowledge and-belief the use was exclusive. Recitals in the application show that each related to the same trade designations previously used, yet they were different in that, as already observed, some features of the first were omitted from the second. This difference is not important in itself, but is referred to merely to give point to a suggestion to be made presently.
The statute limits our inquiry to the ten years preceding its passage. During that period “Abricotine” was in the French language the common name of the liqueur having the flavor of the apricot which was used in its manufacture. Abricot has for centuries been the French name of the fruit we call apricot, and the word “Abricotine” came in, the well-known way of the growth and development of languages—■ the addition of the suffix “in” or “ine” to root words—just as quinine, glycerin, glycerine, acontine, and a host of others. The beaten path was followed in naming the antiseptic listerine after Sir Joseph Lister, though an arbitrary tei'm was probably coined, since Lister was not the root name of an elexnent in the product. The period of exclusive use required by the statute and claimed by complainant is from February 20, 1895, to February 20, 1905. I have said that during this period “Abricotine” was the well-known, established, specific name of the article which both parties sell. Coxnplainant did not coin it; it was in the vocabulary and she gave it no new meaning or application. In volume 22, La Grande Encyclopedic, published in Paris, May 22, 1895-June 30, 1896, under the title “Liqueur” is given a recipe for making the liqueur Kilmmel, following which, it is said:
“On pent íabriquer ainsi une foule de liqueurs, anisette, abricotine, mentbe, raspail, marasquin” etc.
A person can make in this way a large number of liqueurs, anisette, abricotine and so on. This appeared right at the beginning of complainant’s alleged ten-year period of exclusive use. It is assumed in the opinion of the court that Abricotine may be a descriptive term. But more than that, it was from the commencement the specific, substantive name of the commodity. Complainant did not even adapt an old word to a new use; she took a current verbal coin of France, just as we of this country would call a hoe a hoe or a spade a spade, and asks a monopoly of it in this country. But, it is said, we have no judicial knowledge of the French language and there was no swoxm testimony on the subject. Of course, broadly speakixig, a ceftirt will not assume judicial knowledge of a foreign language; - but the information . needed here is far shox-t of that. All agree that a court may resort to dictionaries in its own language to inform its understanding, and that embraces many things of which it was wholly ignorant before. This conceded right extends to phrases taken from foreign tongues, as, for
There are two aspects in which this case may be viewed: First, that complainant registered the name “Abricotine” as her trade-mark; second, that she registered an assemblage of marks, names, etc., in which “Abricotine” appeared as the commodity to which the marks were applied. In the foregoing opinion the first is assumed, I think, inad-: vertently. The trade-mark claimed by the last registration is shown in the opinion to consist of the three things already mentioned and the name “Abricotine.” In the statement and verified declaration for the registration the combination is referred to as a whole; the particular name abricotine is not mentioned at all. But if the claim be confined to the word alone, complainant must fail because as a fact there was no exclusive use for the ten-year period. It would be an effort to secure a monopoly of the common name by which an' article is known in trade and commerce. It is inconceivable that Congress contemplated such a thing. Though liqueurs are a small and not widely knowp group of commodities, yet necessarily the same principles apply as to others; and it could as well be said that complainant might appropriate for her sole use such descriptive words and settled names as “Pure Lard,” “Corn Meal,” and “Sweet Potatoes.” There would be no ¿scape from this conclusion. If the name by which an article of nature or manufacture goes has become so established and common that it is set forth in a dictionary or national encyclopedia, can it be said that a private individual thereafter enjoyed the exclusive use of it? Such an appropriation, susceptible of perpetuation by renewal of registration, would be so contrary to public policy that Congress manifestly did not intend it. The registration gives but a prima facie private right which yields to the public right when judicially known.
I think it evident that complainant never registered “Abricotine” as a trade-mark except as it was a part of an assemblage or the common name of the article to which the real trade-mark was applied. There
“Of course, if it had. become such with the assent and acquiescence of Saxlehner, he could not thereafter assert his right to its exclusive use,” but, as he apparently made every effort to stop its use, “it ought not be charged up against his claim that the word had become generic.”
Therefore a word may be lost from a trade-mark if it becomes a generic or descriptive ■ name with the owner’s acquiescence. It is equally true that if a word is the recognized and established name of' an article, and hence not by itself susceptible to appropriation as a trade-mark, it cannot be appropriated by joining with it separable arbitrary symbols and other designations. There can be no doubt of the application of this rule to a case under the ten-year clause of the act of 1905, where the word sought to be appropriated has been so established as the name of the article that in the very nature of things the claimant could not have had its exclusive use. Otherwise the circumstance that no one else had happened to use the entire combination of separable designations could be employed to protect each part separately. The ordinary names of! commodities in daily use and words and expressions descriptive of their qualities and properties could be privately monopolized if they happened to have been exclusively used with particular arbitrary symbols and proper names for the ten years preceding February 20, 1905; and quite likely there are many such cases in this country. If complainant’s first registration had been effective under the ten-year clause, then by such a construction no other person could lawfully describe his apricot cordial as “Eiqueur extraite du Fruit l’Abricot,” nor have expressed on his labels the English equivalent of that description. The consequences of such a doctrine would be quite extraordinary. The complainant’s just rights would be conserved by treating the trade-mark as consisting of the shield, the contained initials, and the name “P. Gamier,” and as applying to the liqueur abricotine. As so construed, the affidavit for registration might be true, and other persons, defendant for instance, would be free to call their product by its right npe, provided they did not use complainant’s marks or symbols.