1. A proceeding in the Court of Appeals of the District of
Columbia under § 9 of the Trade-Mark Act of 1905 to review a
decision of the Commissioner of Patents refusing to cancel the
registration of a trademark, is an administrative matter, and not a
"case" within the meaning of Art. III of the Constitution. P.
272 U. S.
698.
2. This Court therefore has no constitutional power to review
the decision of the Court of Appeals in such a proceeding -- not
even when that court dismisses the appeal from the Commissioner for
want of jurisdiction under the Trade-Mark Act. P.
272 U. S.
699.
Appeal from 53 App.D.C. 320, 290 Fed. 340, dismissed.
Appeal from a decision of the Court of Appeals of the District
of Columbia in a proceeding to review a decision of the
Commissioner of Patents refusing to cancel the registration of a
trademark. The decision of the court below dismissed the appeal for
lack of jurisdiction under the Trade-Mark Act. An application to
this Court for a writ of certiorari was denied, 266 U.S. 609.
Page 272 U. S. 695
MR. CHIEF JUSTICE TAFT delivered the opinion of the Court.
The Postum Cereal Company and its predecessors in title have for
years manufactured a cereal breakfast food to which they applied,
as a trademark, the word "Grape-Nuts,"
Page 272 U. S. 696
for which they secured registrations under the Trade-Mark
Registration Act of February 20, 1905 (33 Stat. 727, § 9), and
amendments. They filed a petition of opposition to the registration
by the California Fig Nut Company of the trademark "Fig-Nuts" which
that company had registered under the Act of March 19, 1920, § 1,
par. b, 41 Stat. 533.
Section 2 of the same Act provides that, when any person shall
deem himself injured by the registration of a trademark under the
Act, he may apply to the Commissioner of Patents to cancel it. Upon
due notice to the registrant, a hearing is to be had before an
examiner of interferences in the Patent Office, with an appeal to
the Commissioner. The California Fig Nut Company, the registrant,
filed an answer denying that the petitioner was injured and taking
issue within the averments of its petition. The examiner of
interferences held against the petitioner and recommended that the
registration be not cancelled. An appeal was taken to the
Commissioner of Patents, who affirmed the holding of the examiner
of interferences.
An appeal was then taken from the decision of the Commissioner
to the Court of Appeals of the District of Columbia. That court
held that, under the Act of March 19, 1920, 41 Stat. 533, there was
no jurisdiction given to that court to hear an appeal from the
Commissioner of Patents. This holding was in accordance with a
previous decision of the same court in
United States
Compression Inner Tube Co. v. Climax Rubber Company, 53
App.D.C. 370, 290 F. 345. Accordingly, the appeal was dismissed.
The present appeal to this Court was allowed by the Court of
Appeals.
The Trade-Mark Act of 1920, c. 104, 41 Stat. 533, is
entitled:
"An act to give effect to certain provisions of the convention
for the protection of trademarks and commercial names, made and
signed in the City of Buenos
Page 272 U. S. 697
Aires, in the Argentine Republic, August 20, 1910, and for other
purposes."
The first section provides that the Commissioner of Patents
shall keep a register of all trademarks communicated to him by the
international bureaus as provided for by the convention upon which
a certain fee has been paid. Paragraph (b) of § 1 provides that all
other trademarks not registerable under the Act of February 20,
1905 (with certain exceptions not here relevant), but which have
been in
bona fide use for not less than one year in
interstate or foreign commerce, upon or in connection with any
goods of a proprietor upon which a fee of $10 has been paid to the
Commissioner of Patents, may be registered under the Act, provided
that the trademarks which are identical with the known trademarks
owned and used in interstate commerce by another, and appropriated
to merchandise of the same descriptive properties as to be likely
to cause confusion or mistake in the mind of the public or deceive
purchasers, shall not be placed on the register. The chief
objection of the petitioner to the registration of "Fig Nuts" as a
trademark for a cereal breakfast food is that it is likely to cause
confusion or mistake and deceive purchasers into thinking they are
buying the petitioner's breakfast food marked and widely known as
"grape-nuts."
Section 6 of the Act of 1920 adopts provisions of certain
sections of the Act of February 20, 1905, 33 Stat. 728. But those
sections do not include § 9 of the older Act by which provision is
made for an appeal from the decision of the Commissioner of Patents
to the District Court of Appeals, and for this reason the District
Court of Appeals dismissed the appeal. The contention of the
appellant here is that § 9 of the Act of 1905 does apply to the
proceeding here taken under the Act of 1920, and that the Court of
Appeals, in holding otherwise, denied a right which the appellant
here is entitled to have vindicated. It asks this Court to reverse
the dismissal by the District Court of Appeals and, in effect,
enforce the jurisdiction of
Page 272 U. S. 698
that court to entertain its appeal from the Commissioner of
Patents.
The first difficulty the appellant has to meet is the question
whether this Court has jurisdiction to consider such an appeal. The
argument the appellant makes is that this appeal was allowed July
1, 1924, to the judgment of dismissal by the Court of Appeals of
April 7, 1924, that the Act of February 13, 1925, 43 Stat. 936,
941, amending § 250 of the Judicial Code, left the old section
applicable to such pending appeal, that, by the old § 250, any
final judgment or decree of the Court of Appeals might be
reexamined in this Court upon error or appeal in cases in which the
construction of any law of the United States is drawn in question
by the defendant, that this appeal draws in question the
construction of the Trade-Mark Act of 1920 given by the Court of
Appeals by which that court dismissed the appeal taken to it from
the Commissioner of Patents, and that the dismissal from which this
appeal was allowed was a final judgment under the cases of
Shaffer v. Carter, 252 U. S. 37,
252 U. S. 44,
and
Baldwin Co. v. Robertson, 265 U.
S. 168. The case of
Baldwin v. Howard,
256 U. S. 35, in
which certiorari to this Court from a similar trademark proceeding
was denied is explained by the appellant as resting on the sole
ground that the judgment below was not a final one.
We do not think this course of argument can be sustained.
Assuming for the purposes of this discussion that the District
Court of Appeals was wrong in not holding that § 9 of the Act of
1905 did apply to the Commissioner of Patents' decision under the
Act of 1920, even so, an appeal cannot be taken to this Court to
remedy the error. The decision of the Court of Appeals under § 9 of
the Act of 1905 is not a judicial judgment. It is a mere
administrative decision. It is merely an instruction to the
Commissioner of Patents by a court
Page 272 U. S. 699
which is made part of the machinery of the Patent Office for
administrative purposes. In the exercise of such function, it does
not enter a judgment binding parties in a case as the term case is
used in the third article of the Constitution. Section 9 of the
Trade-Mark Act of 1905 applies to the appeal taken under it the
same rules which, under § 4914, R.S., apply to an appeal taken from
the decision of the Commissioner of Patents in patent proceedings.
Butterworth v. Hoe, 112 U. S. 50,
112 U. S. 60;
Gaines v. Knecht, 27 App.D.C. 530, 532;
Atkins v.
Moore, 212 U. S. 285,
212 U. S. 291.
Neither the opinion nor decision of the Court of Appeals under §
4914 R.S. or § 9 of the Act of 1905 precludes any person interested
from having the right to contest the validity of such patent or
trademark in any court where it may be called in question. This
result prevents an appeal to this Court, which can only review
judicial judgments. This Court has so decided in
Frasch v.
Moore, 211 U. S. 1, in an
appeal as to patent proceedings, and in
Atkins v. Moore,
212 U. S. 285, as
to appeals in trademark proceedings. This was the
ratio
decidendi of
Baldwin v. Howard, 256 U. S.
35, already referred to, where both appeal and
certiorari were denied in a similar trademark proceeding.
It was said in these cases that the appeal was denied because
the action of the Court of Appeals was not a final judgment. This
reason was a true one, but it should not be understood to imply
that, in such a proceeding, circumstances might give it a form that
would make it a final judgment subject to review by this Court.
That is the error that the appellant here has made in pressing its
appeal. Appellant relies on
Shaffer v. Carter,
252 U. S. 37,
252 U. S. 44,
holding that a judgment of dismissal for lack of jurisdiction is a
final judgment for purposes of appeal. But the citation has no
application in such a case as this. For here, the action of the
Court of Appeals in its dismissal was dealing with something which,
even
Page 272 U. S. 700
if it should have been received, was not in the proper sense a
judgment at all. Whatever the form of the action taken in respect
of such an appeal, it is not cognizable in this Court upon review,
because the proceeding is a mere administrative one.
The distinction between the jurisdiction of this Court which is
confined to the hearing and decision of cases in the constitutional
sense and that of administrative action and decision, power for
which may be conferred upon courts of the District is shown in the
case of
Keller v. Potomac Electric Company, 261 U.
S. 428,
261 U. S. 440,
261 U. S.
442-443. There it is pointed out that, while Congress in
its constitutional exercise of exclusive legislation over the
District may clothe the courts of the District, not only with the
jurisdiction and powers of the federal courts in the several
states, but also with such authority as a state might confer on her
courts,
Prentis v. Atlantic Coast Line Company,
211 U. S. 210,
211 U. S.
225-226, and so may vest courts of the District with
administrative or legislative functions which are not properly
judicial, it may not do so with this Court, or any federal court
established under Article III of the Constitution. Of the
jurisdiction of this Court, we said at p.
211 U. S.
444:
"Such legislative or administrative jurisdiction, it is well
settled, cannot be conferred on this Court either directly or by
appeal. The latest and fullest authority upon this point is to be
found in the opinion of Mr. Justice Day, speaking for the court in
Muskrat v. United States, 219 U. S.
346. The principle there recognized and enforced on
reason and authority is that the jurisdiction of this Court and of
the inferior courts of the United States ordained and established
by Congress under and by virtue of the third article of the
Constitution is limited to cases and controversies in such form
that the judicial power is capable of acting on them, and does not
extend to an issue of constitutional law framed by Congress for
Page 272 U. S. 701
the purpose of invoking the advice of this Court without real
parties or a real case, or to administrative or legislative issues
or controversies."
See also Liberty Warehouse Co. v. Grannis, 273 U. S.
70.
With this limitation upon our powers, it is not difficult to
reach a conclusion in the present case. We should have had no power
to review the action of the district court if it had heard the
appeal and taken administrative jurisdiction, and, by the same
token, have now no power to review its action in refusing such
jurisdiction.
But it is said that this leaves the appellant without any remedy
to review the decision of the District Court of Appeals and makes
its conclusion final in respect to the construction of the
Trade-Mark Act of 1920. Even if this be so, as to which we express
no opinion, it cannot furnish a reason for exceeding the
constitutional powers of this Court.
The appeal is dismissed.