Rossmann v. Garnier

SMITH, Circuit Judge.

This suit was brought by the appellee, Caroline Henriette Gamier, to enjoin the appellant, Tekla Rossmann, from infringing a registered trade-mark, to restrain'her from unfair trade, and for an accounting, and resulted in a decree as prayed.

November 1, 1910, Caroline Henriette Gamier registered in the Patent Office as a trade-mark for cordials the following:

She alleged in her statement that she was a citizen of France residing at Enghien-les-Bains, France, and the trade-mark had been used in her business and that of her predecessor, Andre Georges Gamier, since on or about the 1st day of August, 1872. She alleged in her declaration that said trade-mark had been registered in France and that the same had been in actual use as a trade-mark of the appellant and her predecessor from- whom title was derived for ten years next preceding the passage of the act of February 20, 1905, and to the best of her knowledge and belief •such use had been exclusive. In her bill o'f complaint Mrs. Gamier says that defendant Tekla Rossmann is engaged in selling a cordial under the name “Abricotine” upon which the complainant claims a trademark in commerce between the several states.

The appellant, first denies that the court had any jurisdictibn of ■this suit except under .the trade-mark law because it is not shown that the complainant is a citizen of France.

In the view taken by the court it is sufficient to say that all the matters which will be passed upon arise under the trade-mark law, and it is therefore unnecessary to consider this question.

[1] The federal court has jurisdiction of all matters arising under the trade-mark statute even though both parties be citizens of the same state. Elgin National Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365.

[2] The defendant claims the entire trade-mark law of 1905, 33 Stats. 724, is unconstitutional, and inferentially the same contention is made as to the act of 1881, 21 Stats. 502, and of 1882, 22 Stats. 298.

The first trade-mark legislation passed by Congress was in 1870, •chapter 230 of the Laws of the Forty-First Congress, and is found in 16 Stats. 198. That was entitled “An act to revise, consolidate, and .amend the statutes relating to patents and copyrights.”

Sections 77 to 84 of this act referred exclusively to trade-marks. There was nothing in the act to refute the presumption quite apparent from its title that it was enacted.by Congress in the supposed exercise of its powers under the eighth clause of the eighth section of the first article of the Constitution.

“Sec. 8. The Congress shall have power: * * * To promote the progress •of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

In 1876/ 19 Stats. 141, Congress passed an act to punish the counterfeiting of trade-mark goods and the selling or dealing in such goods. ’This act was for the further security or protection of trade-mark hold<ai*e rmn^r thp iicf* ot |X/0

In the Trade-Mark Cases, 100 U. S. 82, 25 L. Ed. 550, the Supreme Court held that no power to pass trade-mark legislation was conferred by the provision of the Constitution quoted and that, as the laws of 1870 and 1876 made no distinction between trade-marks used in intrastate commerce and those used in foreign commerce, interstate commerce, and commerce with the Indian tribes, both of said acts were necessarily void. This decision was rendered in October, 1879, and it was in conformity with what was supposed to have been laid down by the Supreme Court in those cases that all the subsequent legislation upon the subject has been enacted. . It is probably true that the con■stitutionality of the more recent legislation has never been expressly passed upon by the Supreme Court of the United States, but that legislation has now stood for more than 30 years. It has been enforced by the United States Supreme Court and all the other courts of the United States, and we see no reason to suppose the law is not sustainable under clause 3 of s'ection 8 of article 1 of the Constitution:

“The Congress shall have .power: * * * To regulate commerce with foreign nations, and among the several states, and with the Indian tribes.”

In the Trade-Mark Cases, supra, the Supreme Court said:

“Whether the trade-mark bears such a relation to commerce in general terms as to bring it within congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave undecided.”

And again:

“In what we have here said we wish to be understood as leaving untouched the whole question of the treaty-making power over trade-marks, and of the duty of Congress to pass any laws necessary to carry treaties into effect.”

In Elgin National Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 673, 21 Sup. Ct. 270, 273 (45 L. Ed. 365), the Supreme Court said:

“The term (trade-mark) 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.”

Surely if this be a correct definition of a trade-mark regulations for the registering and protection of them in connection with commerce, interstate or foreign, or with the Indian tribes, is legitimate legislation' in connection with the regulation of such commerce. Surely if such marks are distinctive badges of authenticity it is as much a part of the regulation of interstate commerce to regulate them as are the branding features under the pure food law.

This court cannot "therefore hold that such- legislation is unconstitutional en bloc.

[3, 4] The act of 1905 contains the following provision:

“That nothing herein shall prevent the registration of any mark "used by the applicant or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations or among the several states, or with Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this act.” 33 Stats. 726, § 5.

It is contended that at least this so-called ten-year clause is unconstitutional. It was held otherwise in Thaddeus Davids Co. v. Davids et al., 178 Fed. 801, 102 C. C. A. 249; Id. (C. C.) 190 Fed. 285; Id, 192 Fed. 915, 114 C. C. A 355; Coca-Cola Co. v. Deacon Brown Bottling Co. et al. (D. C.) 200 Fed. 105; Coca-Cola Co. v. Nashville Syrup Co. (D. C.) 200 Fed. 153, 157; Hughes et al. v. Alfred H. Smith Co. (D. C.) 205 Fed. 302; In re Cahn, Belt & Co, 27 App. D. C. 173.

The last case presents a question 'of construction but not one of constitutionality.

It is apparent that a technical trade-mark is entitled to registration without reference to the ten-year clause, and, if none but technical trade-marks are entitled to be registered under it, then it might as well have been omitted.

It will be observed that section 5 provides that any. mark, not trademark, which was in actual and exclusive use as a trade,-mark for ten years before the passage of the act, may be registered. This contemplates that any mark which was not a technical trade-mark, but which had been actually and exclusively used by the applicant or his predecessor for the required time could be registered as a trade-mark. This being true, there was no reason why the complainant could not register the word “Abricotine” under the ten-year clause, even assuming it was a descriptive word, if she and her predecessors had used it exclusively for the ten-year period as a trade-mark. Section 16 of the act of 1905 provides that the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership. The application having been made under the ten-year clause, and there being no evidence tending to negative the prima facie case made under section 16, the court finds that complainant owned the trade-mark under the ten-year clause, and this entirely aside from the question as to whether Abricotine was the proper subject of a trade-mark aside from the ten-year clause.

[5] It is insisted that the trade-mark registered was the tabret or shield and the initials which appeared thereon and the facsimile of the signature of “P. Gamier” or else was of the entire inscription, and that defendant had the right to use the word “Abricotine” taken from said trade-mark. ,

This seems to have been fully answered in Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60, where it is said:

“It is not necessary to constitute an infringement that every word of a trade-mark should be appropriated. It is sufficient that enough be taken, to deceive the public in the purchase of a protected article. * * * The reports are full of cases where bills have been sustained for the infringement of one of several words of a trade-mark.”

In that case it was held that a trade-mark upon bitter waters of “Hunyadi-Janos” was infringed by the use of the words “Hunyadi Matyas” on similar waters.

The defendant contends there is no evidence that she has sold the cordial in question except locally in Missouri. She ignores the fact that she filed the following in the trial court:

“And for answer to the interrogatory numbered 1 contained in said bill of complaint this defendant says that she has never sold or caused to be sold any cordials or liquor or goods of similar descriptive properties under the trademark Abricotine; but that she has sold such goods bearing a label having the word Abricotine thereon as a descriptive word in association with other matter as hereinbefore stated and that such goods have been sold in commerce between the several st.ates of the United States since the 1st day of November, 1910.”

The appellee seems to place some reliance on the fact that she claims to be a citizen of France and, as we understand it, claims certain rights under the trade-mark convention proclaimed July 6, 1869; but owing to doubt as to the sufficiency of the evidence to show her citizenship of France, to the absence of proof of compliance with the terms of that convention, and doubts as to the effect upon such convention of the provisions of the act of 1905, we leave all questions as to whether she has any rights under said convention undisposed of.

[6] The court below not only granted an injunction as prayed, but granted an accounting.

Section 28 of the act- of 1905, 33 Stats. 730, is as follows:

“Sec. 28. That it shall be the duty of the registrant to give notice to tho public that a trade-mark is registered, either by affixing thereon the words-‘Registered in U. S. Patent Office,' or abbreviated thus, ‘Reg. XT. S. Pat. Off.,’ or when, from the character or size of the trade-mark, or from its manner of attachment to the article to which it is appropriated, this cannot be done, then ,by affixing a label containing a like notice to the package or receptacle wherein the article or articles are inclosed; and in any suit for infringement by a party failing so to give notice of registration no damages shall be recovered, except on proof that the defendant was duly notified of infringemeht, and continued the same after such notice.”

It does not appear that in the use of the trade-mark the appellee ever complied with the requirement that she give notice to the public by affixing thereto the words “Registered in U. S. Patent Office,” or “Reg. U. S. Pat. Off.,” nor on a separate label, nor is there any evidence that any notice was ever given appellee of the infringement.

It follows that no damages can be recovered and no use would be subserved by an accounting.

The writer fully concurs in the separate opinion of-VAN VALKENBURGH, District Judge.

The decree of the District Court is therefore affirmed as to all but the awarding of an accounting, but the case is remanded, with directions to the court to set aside so much of the decree as grants such an accounting.