1. Under § 9 of the Trade Mark Act, which provides that an
applicant for registration of a trademark, if dissatisfied with the
decision of the Commissioner of Patents, may appeal to the Court of
Appeals of the District of Columbia, on complying with the
conditions required in case of an appeal from the decision of the
Commissioner by an applicant for a patent, and that "the same rules
of practice and procedure shall govern in every stage of such
proceedings, as far as the same may be applicable," a party whose
application for registration of trademark has been rejected by the
Commissioner and the Court of Appeals has the remedy by bill in
equity granted to unsuccessful applicants for patent by Rev.Stats.,
§ 4915. P. 262 U. S.
that the District Court for the Northern
District of Illinois had jurisdiction of this suit, against the
Commissioner of Patents and an intervening party, to determine the
plaintiff's right to have a trademark registered.
Page 262 U. S. 210
Appeal from a decree of the district court dismissing a bill for
registration of trademark for lack of jurisdiction.
MR. CHIEF JUSTICE TAFT delivered the opinion of the Court.
This is a direct appeal under § 238 of the Judicial Code from a
decree of the District Court of the United States for the Northern
District of Illinois dismissing a bill in equity. The district
judge certifies that the motion to dismiss the bill was sustained
solely for lack of jurisdiction.
The bill was filed by the appellant, the American Steel
Foundries, against the Commissioner of Patents to secure an
adjudication that the appellant is entitled to have its trademark
"Simplex" registered, and authorizing the Commissioner of Patents
to register the same. The Commissioner appeared as defendant, and,
by stipulation, the Simplex Electric Heating Company was allowed to
intervene as the real party in interest. The bill averred that the
American Steel Foundries had duly filed an application in the
Patent Office for the registration, that the Examiner of
Trade-Marks had refused the application, that the Commissioner of
Patents had affirmed this refusal, and that, on appeal, the Court
of Appeals of the District of Columbia had affirmed the action of
the Commissioner, that a petition for certiorari had been filed in
this Court and granted, and that, thereafter, the cause
Page 262 U. S. 211
was dismissed by this Court for lack of jurisdiction on the
ground that the decree of the Court of Appeals was not a final
The appellant then filed this bill under § 9 of the Trade-Mark
Act of February 20, 1905, 33 Stat. 724, c. 592, and § 4915,
Rev.Stats. The intervener based its motion to dismiss on the lack
of jurisdiction "over the subject matter or alleged cause of
action," and the motion was granted without opinion.
Section 9 of the Trade-Mark Act reads as follows:
"Sec. 9. That if an applicant for registration of a trademark,
or a party to an interference as to a trademark, or a party who has
filed opposition to the registration of a trademark or party to an
application for the cancellation of the registration of a trademark
is dissatisfied with the decision of the Commissioner of Patents,
he may appeal to the Court of Appeals of the District of Columbia,
on complying with the conditions required in case of an appeal from
the decision of the Commissioner by an applicant for a patent, or a
party to an interference as to an invention, and the same rules of
practice and procedure shall govern in every stage of such
proceedings, as far as the same may be applicable."
Section 4915 of the Revised Statutes reads as follows:
"Sec. 4915. [Patents obtainable by bill in equity.] Whenever a
patent on application is refused, either by the Commissioner of
Patents or by the Supreme Court of the District of Columbia upon
appeal from the Commissioner, the applicant may have remedy by bill
in equity, and the court having cognizance thereof, on notice to
adverse parties and other due proceedings had, may adjudge that
such applicant is entitled, according to law, to receive a patent
for his invention, as specified in his claim, or for any part
thereof, as the facts in the case may appear. And such
adjudication, if it be in favor of the right of the applicant,
shall authorize the
Page 262 U. S. 212
Commissioner to issue such patent on the applicant filing in the
Patent Office a copy of the adjudication, and otherwise complying
with the requirements of law. In all cases where there is no
opposing party, a copy of the bill shall be served on the
Commissioner, and all the expenses of the proceeding shall be paid
by the applicant, whether the final decision is in his favor or
The question in this case is whether the closing words of § 9,
"and the same rules of practice and procedure shall govern in every
stage of such proceedings, as far as the same may be applicable,"
are broad enough in their scope to include "the remedy by bill in
equity" granted to unsuccessful applicants for a patent in §
In Gandy v. Marble, 122 U. S. 432
unsuccessful applicant for a patent who had carried his application
by appeal to the Supreme Court of the District, which was dismissed
on its merits January 30, 1880, on May 3, 1883, filed a bill of
equity in the District Supreme Court under § 4915 against the
Commissioner of Patents. That court dismissed the bill on the
ground that the applicant had failed to prosecute his application
within two years after the dismissal of his appeal from the
Commissioner by the Supreme Court of the District, basing it on §
4894 of the Revised Statutes, reading as follows:
"Sec. 4894. All applications for patents shall be completed and
prepared for examination within two years after the filing of the
application, and, in default thereof, or upon failure of the
applicant to prosecute the same within two years after any action
therein, of which notice shall have been given to the applicant,
they shall be regarded as abandoned by the parties thereto, unless
it be shown to the satisfaction of the Commissioner of Patents that
such delay was unavoidable."
This section applies to proceedings in the Patent Office and
before the Commissioner, and it was pressed upon this Court that it
could not apply to such an independent
Page 262 U. S. 213
proceeding as the bill in equity provided for in § 4915. But
this Court held that § 4894 did apply. Mr. Justice Blatchford,
speaking for the Court, admitted (p. 122 U. S.
), following Butterworth v. Hoe,
112 U. S. 50
112 U. S. 61
that the proceeding by bill in equity under § 4915
"intends a suit according to the ordinary course of equity
practice and procedure, and is not a technical appeal from the
Patent Office, nor confined to the case as made in the record of
that office, but is prepared and heard upon all competent evidence
adduced, and upon the whole merits,"
but continued, "yet the proceeding is, in fact and necessarily,
a part of the application for the patent." He summed up the
conclusion of the Court as follows (p. 122 U. S.
"The presumption of abandonment, under § 4894, unless it is
shown that the delay in prosecuting the application for two years
and more after the last prior action, of which notice was given to
the applicant, was unavoidable, exists as fully in regard to that
branch of the application involved in the remedy by bill in equity
as in regard to any other part of the application, whether so much
of it as is strictly within the Patent Office, or so much of it as
consists of an appeal to the Supreme Court of the District of
Columbia under § 4911. The decision of the court on a bill in
equity becomes, equally with the judgment of the Supreme Court of
the District of Columbia on a direct appeal under § 4911, the
decision of the Patent Office, and is to govern the action of the
Commissioner. It is therefore clearly a branch of the application
for the patent, and to be governed by the rule as to laches and
delay declared by § 4894 to be attendant upon the application."
This view of the intimate relation of the bill in equity allowed
in § 4915 to the application for a patent and the practice and
procedure provided in due course thereof is of much assistance in
giving proper scope to the words of § 9 of the Trade-Mark Act.
After making provision for
Page 262 U. S. 214
an appeal to the District Court of Appeals from a simple refusal
of registration, and from decisions of the Patent Office in three
different kinds of adversary proceedings therein in respect of such
registration, on complying with the conditions required in case of
an appeal from refusal of a patent or a decision in a patent
interference proceeding, the words are "and the same rules of
practice and procedure shall govern in every stage of such
proceedings as far as the same may be applicable." If the bill in
equity of § 4915 is only a part of the proceeding for an
application for a patent, as held in Gandy v. Marble,
is no straining of the language to make these words include a bill
in equity for the registration of a trademark. This Court has taken
exactly this view in Atkins v. Moore, 212 U.
. In that case, it was held that a decision of the
Court of Appeals of the District of Columbia affirming the decision
of the Commissioner of Patents refusing registration of a trademark
on an appeal under § 9 of the Trade-Mark Act was not a final
judgment of the Court of Appeals which could be appealed to this
Court, and, in the argument to show that it was not, Chief Justice
Fuller, who spoke for the Court, said:
"Under § 4914 of the Revised Statutes, no opinion or decision of
the Court of Appeals on appeal from the Commissioner precludes 'any
person interested from the right to contest the validity of such
patent in any court wherein the same may be called in question,'
and, by § 4915, a remedy by bill in equity is given where a patent
is refused, and we regard these provisions as applicable in
trademark cases under § 9 of the Act of February 20, 1905."
This language is quoted with approval in the opinion of this
Court in Baldwin Co. v. Howard Co., 256 U. S.
, in which it was held that there could be no review
in this Court, by appeal or certiorari, of a decision of the
District Court of Appeals in respect to the registration of a
trademark under § 9 of the Trade-Mark Act.
Page 262 U. S. 215
It is pressed upon us, however, that this language in Atkins
and in Baldwin Co. v. Howard Co.
necessary to the conclusion in those cases, and is to be regarded
as obiter dictum.
It was used in arguendo,
was the unanimous expression of the Court in both cases. It may be
that the conclusion that the decision of the Court of Appeals was
not final and appealable to this Court could have been reached
without this argument, but, however this may be, the construction
put by the Court on § 9 is most persuasive, and follows so clearly
from the decision in Gandy v. Marble
that we find no
reason to question its correctness.
An argument has been made to us against giving such an effect to
§ 9 based on the intrinsic differences between the nature of the
patent right and that in a trademark. We do not regard such
differences as important in interpreting § 9 when it is obvious
from that section and the whole of the Trade-Mark Act that Congress
intended to produce a parallelism in the mode of securing these two
kinds of government monopoly from the Patent Office.
The decree of the district court is reversed, and the case is
remanded for further proceedings.