1. It is the use without right of the registered trademark of
another in foreign or Indian commerce that gives jurisdiction to
the federal courts under the Act of March 3, 1881.
2. The averments of the bill in this case are treated as
sufficiently asserting the use of the registered trademark and the
alleged imitation in foreign commerce to found jurisdiction in the
Circuit Court under the act, as well as on diverse citizenship.
3. But as it did not appear that the alleged imitation was used
in foreign or Indian commerce or on merchandise intended to be
transported to a foreign country, the decree in favor of appellee
is affirmed.
William R. Warner, a citizen of Pennsylvania, filed this bill
against The Searle & Hereth Company, a corporation of Illinois,
and Gideon D. Searle and others, citizens of Illinois, in the
Circuit Court of the United States for the Northern District of
Illinois, alleging:
Page 191 U. S. 196
That complainant
"was the sole and exclusive owner and proprietor of, and had
used in his business in Philadelphia and in commerce between the
United States and foreign countries, and particularly with New
South Wales and Victoria, a certain arbitrary and fanciful mark,
termed Pancreopepsine, upon bottles and packages containing a
certain medicinal preparation,"
and had sold large quantities thereof "throughout the United
States and in commerce with foreign countries, and particularly in
the cities of Philadelphia and Chicago," and that the public
generally had come to recognize packages and bottles so marked as
containing the preparation manufactured by complainant.
That on December 26, 1882, complainant registered said trademark
in the Patent Office, and obtained a certificate of registration
according to law, a copy of which certificate and accompanying
statement and declaration was attached. That defendants had, in
violation of complainant's rights, "counterfeited, copied, and
colorably imitated the trademark registered," and affixed the mark
or symbol "to a medicinal preparation of the same general nature as
that manufactured" by complainant, and had so closely imitated
complainant's mark or symbol, and the manner of placing it on
bottles and wrappers, that the public had been deceived into
believing that the goods of defendants were those of
complainant,
"and that the said defendants, together and individually, have
sold in the Northern District of Illinois and elsewhere large
quantities of the medicinal preparation intended for the cure of
indigestion similar to that manufactured by your orator and
contained in packages or bottles marked with the trademark or
symbol heretofore referred to as belonging solely to your orator,
or in such close imitation of your orator's trademark or symbol as
has deceived the public, and led such public to believe the said
mark or symbol designated the goods manufactured by your
orator,"
so that complainant's sales have been lessened, and profits
lost.
It was further averred that
"the public in general, and particularly
Page 191 U. S. 197
the citizens of the Northern District of Illinois, identify the
article by the name, mark, or symbol, and that the spurious article
manufactured and sold by the defendants associated with the same
mark or symbol, or a mark or symbol in close imitation thereof, is
a fraud and deception upon such of the citizens of the Northern
District of Illinois, and elsewhere, as purchase the same believing
it to be the genuine article manufactured by your orator, and
thereby the public generally, and particularly the citizens of the
Northern District of Illinois, are damaged and misled."
Complainant prayed for an accounting; for damages, and for
injunction.
Defendants, in their answer, denied that the word
"Pancreopepsine" was a proper subject for registration as a
trademark, and charged that,
"if not deceptive, it is purely descriptive, being a mere
compound of the ordinary names of the ingredients, or the principal
ingredients, contained in the medicinal compound, with the name of
one slightly modified, and they deny, on information and belief,
that the public have associated the said name with the goods
manufactured by the complainant."
They averred that they were engaged in business in Chicago as
general manufacturing chemists, and that they had, among other
things,
"put upon the market a medicinal compound having special merit
as an aid of digestion, consisting, aside from the diluent, of
nearly forty percent of pure pancreatin, about fifty percent of
pure pepsin, and a few other ingredients in relatively small
proportions; that pancreatin and pepsin are well known medicinal
agents of recognized efficacy in promoting digestion, and have been
mixed together for medicinal purposes for nearly or quite thirty
years past; that they have designated their compound upon the
labels of their bottles and packages 'Pancro-Pepsin' in order that
the nature of the compound may be expressed and its purpose as a
digestive implied by the name; that they have put the said
preparation in bottles and sold it upon the market both as a powder
and
Page 191 U. S. 198
in liquid form, the latter being designated 'Elixir
Pancro-Pepsin.'"
Defendants said that, in adopting the name, they had only
followed common usage where it was desired that the name should be
generally descriptive of the compound to which it was applied, and
that their compound could not be more appropriately designated, and
they denied that they had in any manner or way whatsoever copied or
colorably imitated complainant's alleged trademark, or that they
had at any time misled the public or any member thereof into
supposing that the pancro-pepsin manufactured and sold by them was
of complainant's manufacture, or that any person could have been so
misled. And they averred that, even if the name "Pancreopepsine"
could be the subject of a lawful trademark, which they denied, it
had not been infringed by them.
Replication was filed, evidence taken, and hearing had. The
circuit court held that complainant's contention touching unfair
competition was not established, but that the trademark was valid
and had been infringed, and granted an injunction.
The case was carried to the circuit court of appeals, and
William R. Warner, Jr., executor, was made party in place of
William R. Warner, deceased. The circuit court of appeals agreed
that there was no proof establishing unfair competition, held that
the monopoly claimed could not be sustained, and reversed the
decree of the circuit court and remanded the cause with directions
to dissolve the injunction and dismiss the bill. 112 F. 674. From
that decree this appeal was prosecuted and argued on a motion to
dismiss as well as on the merits.
Page 191 U. S. 202
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
In the
Trade-Mark Cases, 100 U. S.
82, it was ruled that the Act of July 8, 1870, carried
forward into sections 4937 to 4947 of the Revised Statutes, was
invalid for want of constitutional authority inasmuch as it was so
framed that its provisions were applicable to all commerce, and
could not be confined to that which was subject to the control of
Congress. But Mr. Justice Miller, speaking for the Court, said that
the question
"whether the trademark 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."
That decision was announced at October term, A.D. 1879, and on
March 3, 1881, an act was approved entitled "An Act to Authorize
the Registration of Trade-Marks, and Protect the Same." 21 Stat.
502, c. 138.
By its first section, it was provided that
"owners of trademarks used in commerce with foreign nations, or
with the Indian tribes, provided such owners shall be domiciled in
the United States, or located in any foreign country or tribes
which by treaty, convention, or law, affords similar privileges to
citizens of the United States, may obtain registration of such
trademarks by complying with"
certain specified requirements.
By the second section, the application prescribed by the
first
"must, in order to create any right whatever in favor of the
party filing it, be accompanied by a written declaration, . . .
Page 191 U. S. 203
that such party has at the time a right to the use of the
trademark sought to be registered, and that no other person, firm,
or corporation has the right to such use, either in the identical
form or in any such near resemblance thereto as might be calculated
to deceive; that such trademark is used in commerce with foreign
nations or Indian tribes, as above indicated. . . ."
The third section provided that
"no alleged trademark shall be registered unless the same appear
to be lawfully used as such by the applicant in foreign commerce or
commerce with Indian tribes as above mentioned, or is within the
provision of a treaty, convention, or declaration with a foreign
power, nor which is merely the name of the applicant, nor which is
identical with a registered or known trademark owned by another and
appropriate to the same class of merchandise, or which so nearly
resembles some other person's lawful trademark as to be likely to
cause confusion or mistake in the mind of the public, or to deceive
purchasers."
By the fourth section, certificates of registration of
trademarks were to be issued, copies of which, and of trademarks
and declarations filed therewith, should be evidence "in any suit
in which such trademarks shall be brought in controversy," and by
section five it was provided that the certificate of registry
should remain in force for thirty years from its date, and might be
renewed for a like period.
Sections seven, ten, eleven, and thirteen are as follows:
"SEC. 7. That registration of a trademark shall be
prima
facie evidence of ownership. Any person who shall reproduce,
counterfeit, copy, or colorably imitate any trademark registered
under this act, and affix the same to merchandise of substantially
the same descriptive properties as those described in the
registration, shall be liable to an action on the case for damages
for the wrongful use of said trademark at the suit of the owner
thereof, and the party aggrieved shall also have his remedy
according to the course of equity to enjoin the wrongful use of
such trademark used in foreign commerce or
Page 191 U. S. 204
commerce with Indian tribes, as aforesaid, and to recover
compensation therefor in any court having jurisdiction over the
person guilty of such wrongful act, and courts of the United States
shall have original and appellate jurisdiction in such cases
without regard to the amount in controversy."
"SEC. 10. That nothing in this act shall prevent, lessen,
impeach, or avoid any remedy at law or in equity which any party
aggrieved by any wrongful use of any trademark might have had if
the provisions of this act had not been passed."
"SEC. 11. That nothing in this act shall be construed as
unfavorably affecting a claim to a trademark after the term of
registration shall have expired, nor to give cognizance to any
court of the United States in an action or suit between citizens of
the same state, unless the trademark in controversy is used on
goods intended to be transported to a foreign country or in lawful
commercial intercourse with an Indian tribe."
"SEC. 13. That citizens and residents of this country wishing
the protection of trademarks in any foreign country, the laws of
which require registration here as a condition precedent to getting
such protection there, may register their trademarks for that
purpose as is above allowed to foreigners, and have certificate
thereof from the Patent Office."
Obviously the act was passed in view of the decision that the
prior act was unconstitutional, and it is therefore strictly
limited to lawful commerce with foreign nations and with Indian
tribes. It is only the trademark used in such commerce that is
admitted to registry, and it can only be infringed when used in
that commerce, without right, by another than its owner.
Reading the seventh, tenth, and eleventh sections together, we
find that the registration is
prima facie evidence of
ownership; that any person counterfeiting or colorably imitating
any trademark registered under the act is liable in the federal
courts to an action on the case for damages for and to injunction
to restrain its wrongful use -- that is, the use of the
Page 191 U. S. 205
simulated mark in foreign commerce or with the Indian tribes,
that the provisions of the act cannot operate to circumscribe any
remedy which a party aggrieved by any wrongful use of any trademark
might otherwise have had, and that the courts of the United States
cannot take cognizance of an action on the case or a suit in equity
between citizens of the same state
"unless the trademark in controversy is used on goods intended
to be transported to a foreign country, or in lawful commercial
intercourse with an Indian tribe."
Where diverse citizenship exists and the statutory amount is in
controversy, the courts of the United States have jurisdiction; but
where those conditions do not exist, jurisdiction can only be
maintained when there is interference with commerce with foreign
nations or Indian tribes, and it is in such cases that the amount
is declared by section 7 to be immaterial. The registered trademark
must be used in that commerce, and is put in controversy by the use
of the counterfeit or imitation on goods intended for such
commerce, as prescribed by section 11.
We cannot concur in the view that the mere counterfeiting or
imitating a registered trademark and affixing the same is the
ground of the action on the case in the federal courts given by
section 7, for it is the wrongful use of the counterfeit or
imitation that creates the liability at law and justifies the
remedy in equity. And the intent and object of the act forbid a
construction that would bring local commerce within its scope.
In the present case, diverse citizenship and requisite amount
existed, and the circuit court therefore had jurisdiction; but it
is argued that the jurisdiction depended entirely on diversity of
citizenship, and hence that the decision of the circuit court of
appeals was final. We think, however, that as infringement of a
trademark registered under the act was charged, the averments of
the bill, though quite defective, were sufficient to invoke the
jurisdiction also on the ground that the
Page 191 U. S. 206
case arose under a law of the United States, and will not
therefore dismiss the appeal.
The bill was filed in February, 1898, and must be treated as
alleging that the trademark was then in use in foreign or Indian
commerce, although the proofs do not make out that fact after
December 26, 1882.
The certificate of registry was good for thirty years as matter
of evidence, but when it was sought to enjoin the wrongful use, it
should have been made to appear that the trademark was then being
used in that commerce, and that that use was interfered with,
without right, by defendant. And if the presumption of continuing
use in such commerce flows from the registry, nevertheless, to make
out infringement, it must appear that the alleged counterfeit or
imitation was being used on merchandise intended to be transported
to a foreign country or in lawful commercial intercourse with an
Indian tribe.
We so held in effect in
Ryder v. Holt, 128 U.
S. 525, and we see no reason to depart from that
ruling.
But the evidence in this record does not show that defendant
used the name of its preparation on merchandise intended to be so
transported, while the sales proved were sales in the City of
Chicago and Northern District of Illinois, and there is nothing to
indicate that the preparation was intended to be used in foreign or
Indian trade.
In short, even if it were assumed that there could be a
trademark in the use of the word "Pancreopepsine" which would be
invaded by the use of the word "Pancro-Pepsin," the circuit court
could not, by virtue of the act, enjoin such use because it was not
used in the commerce to which the act related.
Our conclusion does not require us to consider the question of
the constitutionality of the act, which, it may be added, does not
seem to have been raised in the courts below.
Decree affirmed.
