A trademark for wire rope of a red or other distinctively
colored streak applied to or woven in the rope is too wide and too
indefinite.
Where color is made the essential feature of a trademark, it
must be so
Page 201 U. S. 167
defined or connected with some symbol or design that other
manufacturers may know what they can safely do.
A trademark not limited to a particular color must stand or fall
in its entirety, and if the description is too broad, it cannot be
sustained by proof that only a particular color is used.
Quaere whether mere color not impressed in a particular
design can constitute a valid trademark.
In an equity action between citizens of the same state for
infringement of trademark, the jurisdiction of the federal court
depends solely on whether plaintiff's registered trademark is
valid, and if it is not valid, jurisdiction cannot be assumed of
the case as one where defendant has used plaintiff's device for the
purpose of fraudulently palming off his goods as those of the
plaintiff.
This was a bill in equity brought in the Circuit Court for the
Eastern District of Missouri by the appellant, a Missouri
corporation, against the appellee, another Missouri corporation,
for the infringement of a trademark for wire rope, registered under
the act of Congress of March 3, 1881, 21 Stat. 502.
The bill alleged that the plaintiff, the A. Leschen & Sons
Rope Company, in 1888 had
"adopted for its use as a trademark for its highest and best
grade of wire rope, a strand of a different color from the other
strands of the rope, the said trademark then and now being effected
by your orator by painting one of the strands of the rope so as to
make it distinctly unlike the other strands of the rope;"
that it had continuously used the trademark to the present day;
that it had been extensively advertised; that its sale had been
very great, and that the company had obtained, December 4, 1900, a
registration of such trademark in the office of the Commissioner of
Patents.
The bill further averred that, early in the year 1900, the
defendant company "commenced to paint one of the strands of its
wire rope so as to make it of a distinctly different color from the
other strands of the rope;" that, on October 31, 1900, it applied
to the Commissioner of Patents for a registration; that the
Commissioner declared an interference with the plaintiff, upon
which proofs were taken, the case fully
Page 201 U. S. 168
argued, and plaintiff was declared to be the first to adopt the
trademark; that notwithstanding this, defendant continued its
unlawful use of this trademark with the intent to defraud
plaintiff, to deceive the public, and to take unfair advantage of
the demand for plaintiff's wire ropes, and that said mark is being
used by said defendant to make sales of rope upon the strength of
plaintiff's reputation. The bill further alleged the use of the
trademark by both parties in commerce between the United States and
foreign countries.
Defendant demurred on the ground that the trademark set up in
the bill was not a lawful and valid trademark. The demurrer was
sustained, the bill dismissed (123 F. 149), and the decree of the
circuit court affirmed by the circuit court of appeals. 134 F.
571.
Page 201 U. S. 169
MR. JUSTICE BROWN delivered the opinion of the Court.
As both parties are citizens of the State of Missouri, the
jurisdiction of the circuit court can only be sustained upon the
theory that the case is one arising under the Constitution and laws
of the United States.
By an Act of Congress of July 8, 1870, 16 Stat.198-210, § 77, to
revise the statutes relating to patents and copyrights, Rev.Stat. §
4937, permission was given citizens of the United States and some
others, "who are entitled to the exclusive use of any lawful
trademark, or who intend to adopt and use any trademark for
exclusive use within the United States," to obtain registration of
such trademark in the Patent Office, and by Act of August 14, 1876,
19 Stat. 141, a punishment was provided for a fraudulent use of
such trademarks by others. But in the
Trademark Cases,
100 U. S. 82, this
legislation was declared to be unconstitutional upon the ground
that it was intended to embrace all commerce, including that
between citizens of the same state, and it was held that, if the
power of Congress extended to the registration of trademarks at
all, it must be limited to their use in commerce with foreign
nations and between the several states and with the Indian
tribes.
Apparently in consequence of this decision, Congress, by Act of
March 3, 1881, 21 Stat. 502, passed a new act, declaring that
the
"owners of trademarks used in commerce with foreign nations, or
with the Indian tribes, provided such owners shall
Page 201 U. S. 170
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 causing to be recorded in
the Patent Office a statement specifying name, domicil, location,
and citizenship of the party applying; . . . a description of the
trademark itself with facsimiles thereof, and a statement of the
mode in which the same is applied and affixed to goods,"
etc.
The registration of the trademark in question contains the
following description:
"The trademark consists of a red or other distinctively colored
streak applied to or woven in a wire rope. The color of the streak
may be varied at will, so long as it is distinctive from the color
any body of the rope."
"The essential feature of the trademark is the streak of
distinctive color produced in or applied to a wire rope."
"This mark is usually applied by painting one strand of the wire
rope a distinctive color, usually red."
image:a
It is true that the drawing annexed to the registration, a copy
of which is here given, as well as the exhibits furnished,
Page 201 U. S. 171
show one of the strands colored red, and if the trademark were
restricted to a strand thus colored, perhaps it might be sustained;
but the description of a colored streak, which would be answered by
a streak of any color painted spirally with the strand,
longitudinally across the strands, or by a circular streak around
the rope, was held by both courts, and we think properly, too
indefinite to be the subject of a valid trademark. Certainly a
trademark could not be claimed of a rope the entire
Page 201 U. S. 171
surface of which was colored, and if color be made the essential
feature, it should be so defined, or connected with some symbol or
design, that other manufacturers may know what they may safely do.
Upon the plaintiff's theory, a wire rope containing a streak of any
description or of any color would be an infringement, and a
manufacturer honestly desiring to distinguish his wire rope from
that of the plaintiff's by difference in color might, by adopting a
white streak running along the length of the rope across the
strands, find himself an infringer, when his real object may have
been to obtain a mark which would distinguish his manufacture from
that of the plaintiff's. Even if it were conceded that a person
might claim a wire rope colored red or white, or any other color,
it would clearly be too broad to embrace all colors. So, although
it might be possible to claim the imprint of a colored figure on a
wire rope, the figure should be so described that other
manufacturers would know how to avoid it. If the trademark be a
colored streak, it should be at least described, and a statement of
the mode in which the same is applied and affixed to the rope, and
a trademark which may be infringed by a streak of any color,
however applied, is manifestly too broad.
It would not aid plaintiff's case even if it were shown that it
made use of a colored strand, and that defendant made use of a
strand similarly colored, since the trademark must stand or fall in
its entirety, and if the description therein be too broad, it
cannot be sustained by showing that defendant imitated its color
and its method of applying it. Perhaps, however, the defendant
might be liable under a bill framed upon the theory that it was
endeavoring to dispose of its goods as those of the plaintiff.
Whether mere color can constitute a valid trademark may admit of
doubt. Doubtless it may, if it be impressed in a particular design,
as a circle, square, triangle, a cross, or a star. But the
authorities do not go farther than this. In the case of
Handon's Trademark, 37 Ch.Div. 112, in which a trademark
was claimed for a red, white, and blue label, in imitation
Page 201 U. S. 172
of the French tri-color, for French coffee, it was held not
entitled to registration under the English statute, which requires
a trademark to be distinctive in order to be valid. The court
remarked as follows:
"It is the plain intention of the act that, where the
distinction of the mark depends upon color, that will not do. You
may register a mark, which is otherwise distinctive, in color, and
that gives you the right to use it in any color you like; but you
cannot register a mark of which the only distinction is the use of
a color, because practically, under the terms of the act, that
would give you a monopoly of all the colors of the rainbow."
It is unnecessary to express an opinion whether, if the
trademark had been restricted to a strand of rope distinctively
colored, it would have been valid. As already observed, the claim
is much broader than this. Nor can we assume jurisdiction of this
case as one wherein the defendant had made use of plaintiff's
device for the purpose of defrauding the plaintiff and palming off
its goods upon the public as of the plaintiff's manufacture. Our
jurisdiction depends solely upon the question whether plaintiff has
a registered trademark, valid under the act of Congress, and, for
the reasons above given, we think it has not.
Affirmed.
