The Trade Mark Act of 1905 provides no remedy where the
infringement of a trademark registered under it is within the
limits of a state and does not interfere with interstate or foreign
commerce, nor does it enlarge common law rights within a state
where the mark has not been used. P.
279 U. S.
158.
19 Oh.St. 151, reversed.
Certiorari, 278 U.S. 592, to the Supreme Court of Ohio to review
a judgment affirming a decree which enjoined petitioner from the
printing and selling of labels alleged to infringe respondent's
trademark.
Page 279 U. S. 157
MR. JUSTICE HOLMES delivered the opinion of the Court.
This is a suit brought by the respondent, a corporation of
Minnesota, against the petitioner, a corporation of Ohio, alleging
that the plaintiff has a trademark "Home Brand," registered in the
Patent Office for various grocers' goods which it sells at
wholesale in certain named states of the Northwest, and that the
defendant is printing and selling labels for similar grocers' goods
containing the word "Home," which labels are used by the purchasers
in states other than those in which the plaintiff has established a
market. No interference with interstate or foreign commerce is
alleged. The bill seeks an injunction against
Page 279 U. S. 158
printing and selling such labels for any groceries that the
plaintiff sells. The trial court found that facts to be as above
stated, and the Supreme Court held that the
"purpose and effect of the [Trade-Mark Act of February 20, 1905,
c. 592, § 16; 33 Stat. 728, (Code Tit. 15, § 96)] was to project
the trademark rights of the registrant and owner thereof into all
the states even in advance of the establishment of trade therein,
and to afford full protection to such registrant and owner."
It affirmed a judgment for the plaintiff giving the relief
prayed and a writ of certiorari was granted by this Court.
In the
Trade-Mark Cases, 100 U. S.
82, it was held that the earlier acts attempting to give
these unlimited rights were beyond the power of Congress. Soon
after that decision, an Act of March 3, 1881, gave remedies for the
wrongful use of a registered trademark in foreign commerce or
commerce with Indian Tribes. It was said that obviously the Act was
passed in view of the above-mentioned case, that only the trademark
used in such commerce was admitted to registry, and that the
registered mark could only be infringed when used in that commerce.
Warner v. Searle & Hereth Co., 191 U.
S. 195,
191 U. S. 204
(
see United Drug Co. v. Theodore Rectanus Co.,
248 U. S. 90,
248 U. S. 99),
and the constitutionality of the Act, even when so limited, was
left open. 191 U.S.
191 U. S. 206.
The Act of 1905 goes a little farther, and gives remedies against
reproduction, etc., of the registered trademark "in commerce among
the several states" as well as in commerce with foreign nations,
etc., § 16,
supra. A remedy for such infringement was
given in
Thaddeus Davids Co. v. Davids Manufacturing Co.,
233 U. S. 461.
See also American Steel Foundries v. Robertson,
262 U. S. 209;
Baldwin Co. v. Robertson, 265 U.
S. 168. But neither authority nor the plain words of the
Act allow a remedy upon it for infringing a trademark registered
under it, within the limits of a state and not affecting the
commerce named. More obviously still,
Page 279 U. S. 159
it does not enlarge common law rights within a state where the
mark has not been used.
General Baking Co. v. Gorman, 3
F.2d 891, 894. Some attempt was made to support the decision upon
other grounds, but we do not think them presented by the record,
and they are not mentioned by the Ohio Court.
Judgment reversed.