No sign or form of words can be appropriated as a valid
trademark which, from the nature of the fact conveyed by its
primary meaning, others may employ with equal right for the same
purpose.
Elgin National Watch Co. v. Illinois Watch Co.,
179 U. S. 665.
A trademark must be distinctive in its original signification
pointing to the origin of the article or it must become so by
association.
Canal Co. v.
Clark, 13 Wall. 311.
"Rubberoid," being a descriptive word, meaning like rubber, the
word "Ruberoid" is also descriptive, and, even though misspelled,
cannot be appropriated as a trademark.
While the circuit court cannot take cognizance of the question
of unfair competition by use of plaintiff's tradename where diverse
citizenship does not exist, and in a case where jurisdiction is
based on trademark alone, the judgment of that court is final, if
diverse citizenship does exist and the requisite amount is in
controversy, the judgment can be reviewed in this Court on the
question of unfair competition independently of the questions
involving validity of the trademark.
The essence of unfair competition consists in the sale of the
goods of one manufacturer or vendor for those of another, and this
cannot be predicated solely on the use of a tradename similar to
that used by plaintiff if such tradename is invalid as a trademark.
To do so would be to give the plaintiff's tradename the full effect
of a trademark notwithstanding its invalidity as such.
The facts, which involve the validity of a trademark and the
jurisdiction of this Court on appeal from the circuit court of
appeals in a case involving validity of a trademark and also unfair
trade where diverse citizenship exists, are stated in the
opinion.
Page 220 U. S. 451
MR. JUSTICE McKENNA delivered the opinion of the Court.
The Standard Paint Company, which we shall call the
Page 220 U. S. 452
paint company, a West Virginia corporation and a citizen of that
state, brought this suit against the Trinidad Asphalt Manufacturing
Company, herein referred to as the asphalt company, a Missouri
corporation, having its principal office in the City of St. Louis,
Missouri, in the Circuit Court of the United States in and for the
Eastern Division of the Eastern Judicial District of Missouri, to
restrain the infringement of a duly registered trademark for the
word "Ruberoid" to designate a certain kind of roofing materials
for covering houses and other buildings. The paint company alleges
in its bill that it has used the trademark for more than twelve
years, and has advertised the roofing very extensively under the
name "Ruberoid" roofing, and have built up a large and valuable
trade therein in all parts of the United States and in foreign
countries.
The roofing is manufactured in three different thicknesses,
respectively called one, two, and three-ply, and is then made up
into rolls, the strips in each roll being about three feet in width
and about seventy feet long. The rolls are covered with paper
wrappers, on which are printed, in large type, the words "Ruberoid
Roofing," and enclosed in the rolls are directions for handling and
laying the same, and the name of the paint company as manufacturer.
The roofing contains no rubber.
The asphalt company also makes a roofing, not, however, of the
same material as that of the paint company, but of the same
thickness as the latter, and cut in similar widths and lengths, and
sells it under the name of "Rubbero" roofing.
Two contentions are made by the paint company: (1) that its
trademark is a valid one and has been infringed by the asphalt
company; (2) that the latter has been guilty of unfair competition.
The court of appeals decided adversely to both contentions. 163 F.
977. Of the first contention, the court said it was clear that the
paint company "sought to appropriate the exclusive
Page 220 U. S. 453
use of the term rubberoid," and that its rights were to be
adjudged accordingly, and that as the latter, being a common
descriptive word, could not be appropriated as a trademark, the one
selected by the paint company could not be appropriated. The court
said: "A public right in rubberoid and a private monopoly of
rubberoid cannot coexist." The court expressed the determined and
settled rule to be
"that no one can appropriate as a trademark a generic name or
one descriptive of an article of trade, its qualities, ingredients,
or characteristics, or any sign, word, or symbol which, from the
nature of the fact it is used to signify, others may employ with
equal truth."
For this, cases were cited and many illustrations were given,
which we need not repeat. The definition of a trademark has been
given by this Court and the extent of its use described. It was
said by the Chief Justice, speaking for the Court, that
"the term [trademark] 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. It may consist in any symbol or in any form
of words, but, as its office is to point out distinctively the
origin or ownership of the articles to which it is affixed, it
follows that no sign or form of words can be appropriated as a
valid trademark which, from the nature of the fact conveyed by its
primary meaning, others may employ with equal truth and with equal
right for the same purpose."
Elgin National Watch Co v. Illinois Watch Case Co.,
179 U. S. 665,
179 U. S. 673.
There is no doubt, therefore, of the rule. There is something more
of precision given to it in
Canal Company v.
Clark, 13 Wall. 311,
80 U. S. 323,
where it is said that the essence of the wrong for the violation of
a trademark
"consists in the sale of the goods of one manufacturer or vendor
as those of another, and that it is only when this false
representation is directly
Page 220 U. S. 454
or indirectly made that the party who appeals to a court of
equity can have relief."
A trademark, it was hence concluded,
"must therefore be distinctive in its original signification,
pointing to the origin of the article, or it must have become such
by association."
But two qualifying rules were expressed, as follows:
"No one can claim protection for the exclusive use of a
trademark or tradename which would practically give him a monopoly
in the sale of any goods other than those produced or made by
himself. If he could, the public would be injured, rather than
protected, for competition would be destroyed. Nor can a generic
name, or a name merely descriptive of an article of trade, of its
qualities, ingredients, or characteristics, be employed as a
trademark and the exclusive use of it be entitled to legal
protection."
And, citing
Amoskeag Mfg. Co. v. Spear, 2 Sandf. 599,
it was further said there can be
"no right to the exclusive use of any words, letters, figures,
or symbols which have no relation to the origin or ownership of the
goods, but are only meant to indicate their names or
qualities."
Does the trademark of the paint company come within the broad
rule or within the qualifying ones? In other words, does it have
relation to the origin or ownership of the roofing, or is it merely
descriptive of the roofing? It is conceded that there is no rubber
used in the preparation of the roofing. It is put forth as being in
the "nature of soft, flexible rubber." It is described in the
certificate of registration as follows:
"The class of merchandise to which this trademark is
appropriated is solid substance in the nature of soft, flexible
rubber in the form of flexible roofing, flooring, siding,
sheathing, etc., and the particular class of goods upon which the
said trademark is used is solid substance in the nature of flexible
rubber."
And it is said that the "trademark consists in the arbitrary
word
Ruberoid.'" Rubberoid is defined in the Century
Page 220 U. S.
455
Dictionary as a tradename for an imitation of hard rubber.
It is a compound of the word "rubber" and the suffix "oid," and
"oid" is defined in the same dictionary as meaning
"having the form or resemblance of the thing indicated, 'like,'
as in
anthropoid, like man;
crystalloid, like
crystal;
hydroid, like water, etc. It is much used as an
English formative, chiefly in scientific words."
Rubberoid therefore is a descriptive word, meaning like rubber;
but the paint company insists "Ruberoid" is suggestive merely, not
descriptive,
"because there is in fact no rubber used in its composition, and
its only resemblance to rubber is in respect to its flexibility and
its being waterproof."
But this contention makes likeness and resemblance the same as
identity. If the roofing of the paint company was identical with
rubber, it would be rubber, and not, as it is represented to be, as
we have seen, "in the nature of soft, flexible rubber." It may
rightly be called rubberoid, and so may be roofing made by others
than the paint company, having the same rubber-like qualities --
flexibility and not pervious to water. The word therefore is
descriptive, not indicative of the origin or the ownership of the
goods, and, being of that quality, we cannot admit that it loses
such quality and becomes arbitrary by being misspelled. Bad
orthography has not yet become so rare or so easily detected as to
make a word the arbitrary sign of something else than its
conventional meaning, as different, to bring the example to the
present case, as the character of an article is from its origin or
ownership.
We content ourselves with applying the principle of the cases
which we have cited, and will not review the many cases in which it
has been considered determinative or otherwise. These cases are
collected in the opinions of the circuit court of appeals, and need
not be repeated.
The second contention of the paint company is that the asphalt
company has been guilty of unfair trade and
Page 220 U. S. 456
competition. The latter company urges that we are without
jurisdiction to consider the contention, and cites
Leschen
& Sons Rope Co. v. Broderick, 201 U.
S. 166, in which a claim to a trademark for a
distinctively colored streak applied to or woven in a wire rope was
declared invalid. The bill, in addition to the infringement of the
trademark, alleged unfair competition. The defendant in the case
demurred on the ground that the trademark set up in the bill was
not a lawful and valid trademark. The demurrer was sustained and
the bill dismissed, and the decree of the circuit court was
affirmed by the circuit court of appeals. The case was appealed to
this Court, and we affirmed the decree holding that the trademark
was invalid. Excluding a right to take jurisdiction because the
bill set forth unfair competition, we said:
"Nor can we assume jurisdiction of this case as one wherein the
defendant had made use of plaintiff's devise 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."
The parties in that case were citizens of the same state, and
the jurisdiction of the circuit court depended entirely upon the
trademark statute. In the case at bar, there is diversity of
citizenship as a ground of jurisdiction as well as the assertion of
a valid trademark. It is therefore contended that
Leschen Rope
Co. v. Broderick is not applicable, because, as there was no
valid trademark under the federal statute, it necessarily followed
that the circuit court was wholly without jurisdiction to try the
case in the first instance, the parties being citizens of the same
state, and, as the circuit court was without jurisdiction to try
the issue of unfair trade, the circuit court of appeals was also
without jurisdiction, and that this Court, on appeal, could not
decide that issue. In the case at bar, however, it is urged there
is a diversity of citizenship
Page 220 U. S. 457
as well as the assertion of a right under the federal statute,
and that the circuit court and the circuit court of appeals both
had jurisdiction on that ground as well as on the other, and the
case therefore, it is contended, falls under
Henningsen v.
United States Fidelity and Guaranty Co., 208 U.
S. 404;
Northern Pac. Ry. Co. v. Soderberg,
188 U. S. 526;
Penn Mut. Life Ins. Co. v. Austin, 168 U.
S. 685;
Northern Pac. R. Co. v. Amato,
144 U. S. 465;
Warner v. Searle & Hereth Co., 191 U.
S. 195;
Elgin National Watch Co. v. Illinois Watch
Case Co., 179 U. S. 665.
Passing the last two cases for the moment, we may say of the
others that, while there was diversity of citizenship, and that
would have given jurisdiction to the circuit court independently of
any federal question, statutory or constitutional, a consideration
of a statute or the Constitution of the United States entered into
the merits. Such is not the condition in the case at bar as to the
issue of unfair trade. The asserted trademark, as such, is not an
element. The issue is made independently of it, and under the
assumption of its invalidity. If the trademark were valid, the
issue of unfair trade would be unnecessary to decide. Such an issue
between citizens of different states, even if there were no
technical trademark, a circuit court would have jurisdiction to try
and the circuit court of appeals would have jurisdiction to review,
but the judgment of the latter court would be final.
Warner v. Searle & Hereth Co. and
Elgin
National Watch Co. v. Illinois Watch Case Co. require special
notice. In the latter case, there was not diversity of citizenship,
but there was the assertion of a trademark in the word "Elgin." The
circuit court sustained it; the circuit court of appeals held it
invalid, and reversed the decree of the circuit court and ordered a
dismissal of the bill. This Court affirmed the action of the
circuit court of appeals. It was held that the word was
geographically descriptive, and not subject to be registered as a
trademark. It was contended,
Page 220 U. S. 458
however, that the word had acquired a secondary signification,
and should not therefore be considered as merely a geographical
name. It was conceded, in answer to the contention, that words
could acquire a secondary signification, and their use in that
sense be protected. But the concession and the discussion were for
no other purpose than to bring out clearly, in opposition to the
contention based on the secondary signification of a word, that it
could be, though a generic and descriptive name, "lawfully
withdrawn from common use" by being registered as a trademark. And
the Court was careful to observe that the question considered was
not
"whether the record made out a case of false representation or
perfidious dealing, or unfair competition, but whether appellant
had the exclusive right to use the word 'Elgin' as against all of
the world."
The question was asked, "Was it a lawful registered trademark?"
If so, the answer was,
"Then the circuit court had jurisdiction, under the statute, to
award relief for infringement, but if it were not a lawful
registered trademark, then the circuit court of appeals correctly
held that jurisdiction could not be maintained."
The case may be said to be only of negative value. Unfair trade,
we have seen, was referred to, and it was discussed also by the
circuit court of appeals, but it put it aside as an element of
decision, because the court was, as it said, "without jurisdiction
to grant relief," as the right of the Elgin Watch Company arose
under the Act of Congress, and was limited by the act to recovery
of damages for the wrongful use of a trademark, or to a remedy
according to the course of equity, "to enjoin the wrongful use of
said trademark used in foreign commerce or commerce with the Indian
tribes." The remedy in equity for fraud, it was said, existed
before the statute, and was not given by it, and that the federal
court would have no jurisdiction of it except between citizens of
different states. 94 F. 667, 671.
Page 220 U. S. 459
Warner v. Searle & Hereth Company was a suit
between citizens of different states. The bill alleged the
infringement of a trademark for the word "Pancreopepsine." Unfair
competition was also alleged. The circuit court found that there
was no proof of the latter, but held that the complainant had a
valid trademark, and enjoined the defendant from its use. The
circuit court of appeals concurred in the finding as to unfair
competition, but decided against the validity of the trademark, and
reversed the decree of the circuit court and ordered the bill to be
dismissed. We affirmed the decree of the circuit court of appeals,
and said 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."
But we also said that
"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 where there is interference with commerce with foreign
nations or Indian tribes."
It was held, besides, that as diverse citizenship existed, the
circuit court had jurisdiction, and in answer to the contention
that, as jurisdiction depended entirely on diversity of
citizenship, the decree of the circuit court of appeals was final,
this was said:
"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 case arose under a law of the United
States, and will not therefore dismiss the appeal."
No notice was given to the charge of unfair competition, and
yet, if the contention of the paint company in the case at bar be
sound, we should have decided that question, because it was decided
in the courts below; for, we have
Page 220 U. S. 460
seen, it is the contention of the paint company in this case
that the lower courts having jurisdiction to decide the question of
unfair competition, this Court also has jurisdiction. But, as we
have seen in
Warner v. Searle & H. Co., we did not
pass on the question of unfair competition, though the same
conditions of jurisdiction existed which exist in this case.
Warner v. Searle & Hereth Co. has in it, therefore, an
element of uncertainty, but the statute must be considered. It
makes the judgment of the circuit court of appeals
"final in all cases in which the jurisdiction [the jurisdiction
of the circuit court is meant] is dependent entirely upon the
opposite parties to the suit or controversy being aliens and
citizens of the United States or citizens of different states; also
in all cases arising under the patent laws, under the revenue laws,
and under criminal laws, and in admiralty laws."
In all other cases, there is a right of review by this Court if
there is the statutory amount involved. The case at bar is within
the letter of the statute. The opposite parties to the suit are
citizens of different states, and while this diversity of
citizenship was not necessary to give the circuit court
jurisdiction of the case insofar as it involved the validity of the
trademark, it was necessary to give the court jurisdiction of the
issue of unfair competition. If the latter had stood alone, its
decision would have been final in the court of appeals, and this
Court would have had no jurisdiction to review its decision, and
there is some objection on principle notwithstanding the union of
the charge of unfair competition with the claim of a trademark, to
our taking jurisdiction, but such, we think, is the effect of the
statute.
Macfadden v. United States, 213 U.
S. 288;
Spreckels Sugar Refining Co. v.
McClain, 192 U. S. 397.
We come, therefore, to a consideration of the question of unfair
competition. The circuit court of appeals decided the question
against the paint company. The views
Page 220 U. S. 461
of the circuit court may be open to dispute. The majority of the
court of appeals was of opinion that, aside from the use of the
word "rubbero," there was no imitation by the asphalt company of
the paint company's roofing -- indeed, that the "arrangement,
color, design, or general appearance of the wrappers and markings
on the packages" were in such "marked contrast as to repel all
suggestion of design on the part of the former to misrepresent the
origin or ownership of its product." The circuit court expressed
itself as follows:
"It is true that there is no imitation in the arrangement,
color, or general appearance of the labels, as such, aside from the
similarity of the names, but I think the use of names so similar on
rolls of similar size and shape, both containing roofing material,
is calculated, whether intentionally or unintentionally, to confuse
and deceive the public."
Circuit Judge Sanborn, dissenting from the opinion and judgment
of the court of appeals, was of the opinion that the circuit court
found that the asphalt company was guilty of unfair competition,
and he concurred in the finding, thus giving the weight of his
judgment to its support.
We think the evidence supports the conclusion of the circuit
court of appeals. The only imitation by the asphalt company of the
roofing of the paint company is that which exists in the use of the
word "Rubbero," and this only by its asserted resemblance to the
word "Ruberoid." To preclude its use because of such resemblance
would be to give the word "Ruberoid" the full effect of a trademark
while denying its validity as such. It is true that the
manufacturer of particular goods is entitled to protection of the
reputation they have acquired against unfair dealing, whether there
be a technical trademark or not, but the essence of such a wrong
consists in the sale of the goods of one manufacturer or vendor for
those of another.
Elgin National Watch Co. v. Illinois Watch
Case Co. supra. Such a wrong is not established against
the
Page 220 U. S. 462
asphalt company. It does not use the word "Rubbero" in such a
way as to amount to a fraud on the public.
Decree affirmed.
MR. JUSTICE HUGHES concurs in the result.