opportunity of comparison must be considered, and the
genuine and alleged infringing marks must be judged by
the court, therefore, in the light of that fact.^
In conclusion it is important to bear in mind that
courts of equity have always avoided laying down any
hard and fast rules by which to determine what consti-
tutes fraud. The reason for this absence of set rules has
been well stated as follows: "Were courts of equity to
once declare rules prescribing the limitations of their
power in dealing with it, the jurisdiction would be per-
petually cramped and eluded by new schemes which the
fertility of man's invention would contrive."^
expatiated upon in the afiBdavits and the brief; but no one can look
at both packages without perceiving that there are strong resem-
blances, which could easily have been avoided had there been an honest
effort to give defendants' goods a distinctive dress." National Bis-
cuit Co. V. Baker, 95 Fed. Rep. 135.
iPillsbury V. Pillsbury-Washburn Flour Mills Co., 64 Fed. Rep.
841-847; Manhattan Med. Co. v. Wood, 108 U. S. 218; Alleghany Fer-
tilizer Co. V. Woodside, 1 Hughes, 115; Sawyer v. Kellogg, 7 Fed.
Rep. 721; Sawyer v. Kellogg, 9 Fed. Rep. 601; 'Liggett & Myers
Tob. Co. V. Hynes, 20 Fed. Rep. 883; Hostetter v. Adams, 10 Fed.
Rep. 838-842.
•Weinstock, Lubin & Co. v. Marks, 109 Cal. 529-539.
14
CHAPTER IX.
REGISTRATION.
§94. Introductory. — The English Patents, Designs
and Trade-marks Act, 1883-1888, provides that there can
be no institution of proceedings to prevent or to recover
damages for the infringement of a trade-mark capable
of registration unless it has been registered.^ This pro-
vision does not occur in the act of congress of March 3,
1881, and could have no force or effect if it did, as there
can be no valid trade-mark legislation by congress except
under and by virtue of the commerce clause of the federal
constitution (clause 3 of sec. VIII). As stated by Mr.
Justice Miller: "When, therefore, congress undertakes to
enact a law which can only be valid as a regulation of
commerce, it is reasonable to expect to find on the face of
the law, or from its essential nature, that it is a regula-
tion of commerce with foreign nations, or among the
several states, or with the Indian tribes. If not so lim-
ited, it is in excess of the power of congress. "^
§ 95. The invalid registration acts. — In order to ob-
tain a substantial idea of the difficulties which have
attended our national legislation upon trade-marks, it is
only necessary to read the text of the several enactments
of congress, which are collated in the appendix to this
book. The act of July 8, 1870, was based upon an entire
misconception or disregard of the power resident in con-
gress. Both it and the subsequent penal act of August
14, 1876, were framed with the evident intention of pro-
viding a uniform trade-mark law for the several states.
As will be seen by reference to the annotations to those
acts, in the appendix, their validity was questioned and
H6 and 47 Vict., c. 57, sec. 77; Hazzopulo v. Kaufmann, 23 Sol. J.
819; Goodfellow v. Prince, L. R. 35 Ch. D. 9.
2Trade-mark Cases, 100 U. S. 82.
210
§96] REGISTRATION. 211
negatived upon circuit,^ and it was finally settled by the
supreme court that they were unconstitutional and there-
fore void.^
§ 96. The po-vver of congress to protect trade-
marks. — "The commerce clause of the federal consti-
tution presents the remarkable instance of a national
power which was comparatively unimportant for eighty
years, and which in the last thirty years has been so
developed that it is now, in its nationalizing tendency,
perhaps the most important and conspicuous power pos-
sessed by the federal government."^
It is fortunate that with the judicial determination
that the act of July 8, 1870, was void, came the realiza-
tion by congress that within the scope of authority con-
tained in the words "The congress shall have power
. . to regulate commerce with foreign nations, and
among the several states, and with the Indian tribes,"
lay the foundation for its future trade-mark legislation.
With this fact before it, congress proceeded to the enact-
ment of the act of March 3, 1881, now embodied in the
supplement to the Revised Statutes as section 322. No
reason appears for the fact that under that act protec-
tion and the benefits of registration were extended only
to "owners of trade-marks used in commerce with foreign
nations or with the Indian tribes," and not to owners
of trade-marks used in interstate commerce. But such
is the fact, which it was left to future legislation to
remedy.^
iLeidersdorf v. Flint, 8 Biss. 327,
2Trade-mark Cases, 100 U. S. 82.
3 Prentice & Egan, Commerce Clause of the Federal Constitution,
p. 1.
*"The laws of the United States now in force . . . relate only
to trade-marks specially used in commerce with foreign nations, or
with the Indian tribes. Act of March 3, 1881 (21 St. at Large,
ch. 137, sec. 1). They are particularly restricted so as not to give
cognizance to any court of the United States in an action or suit be-
tween citizens of the same state, unless the trade-mark in controversy
is used on goods intended to be transported to a foreign countr3', or
in lawful commercial intercourse with an Indian tribe. " Wheeler, J.,
in Luyties v. Hollender, 21 Fed. Rep. 281.
212 LAW OF UNFAIR TRADE. [§97
The full text of the present federal trade-mark act/ and
the rules of the Patent Office in reference to the regis-
tration of trade-marks, will be found in the appendix.
§97. The advantages of registration.— The local
registration statutes of the several states are too numer-
ous and involved to be treated here.^ As to federal reg-
istration, Judge Hawley has said that "registration
under the act of 1881 is of but little, if any, value, ex-
cept for the purpose of creating a permanent record of
the date of adoption and use of the trade-mark, or in
cases where it is necessary to give jurisdiction to the
United States courts. "^ Federal registration is, there-
fore, practically useless, owing to the failure of congress
to cover, in the purview of the act of 1881, trade-marks
employed in commerce between the states. As against a
citizen of the same state, a registrant under that act has
not even the right to sue in a court of the United States,
unless it can be shown that both the original and infring-
ing marks are being used in commerce with foreign na-
tions or the Indian tribes.*
Registration under that act is only prima facie evi-
dence of ownership of the trade-mark registered, and is
not conclusive or binding upon the courts as to the right
of a party to its exclusive use.^ The certificate of regis-
^This act has been usually treated as valid. South Carolina v.
Seymour, 153 U. S. 353; 67 Off. Gaz. 1191; Hennessy v. Braun-
schweiger & Co., 89 Fed. Rep. 664. But in a late case Judge Jenkins
said: "There has been no ruling upon the constitutionality of this
act, and it need only be said that its validity is fairly doubtful."
Illinois Watch Case Co. v. Elgin National Watch Co., 94 Fed. Rep.
667-669; 87 Off. Gaz. 2323.
2 Some of the state legislation is referred to post, pp. 231, 232.
3 Hennessy v. Braunschweiger & Co., 89 Fed. Rep. 664-668. Quoted
and followed in Sleepy Eye Milling Co. v. C. F. Blanke Tea & Coflfee
Co., 85 Off. Gaz. 1905. To the same effect see Einstein v. Sawhill,
65 Off. Gaz. 1918; Sherwood v. Horton, Cato & Co., 84 Off. Gaz. 2018.
* Ryder v. Holt, 128 U. S. 525; Luyties v. Hollender, 22 Blatchf.
413; Schumacher v. Schwenke, 26 Fed. Rep. 816; Gravely v. Gravely,
42 Fed. Rep. 265; Prince's Metallic Paint Co. v. Prince Mfg. Co.,
53 Fed. Rep. 493.
^Hennessy v. Braunschweiger, supra; Brower v. Boulton, 53 Fed.
Rep. 389; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 824-826.
In the latter case Judge Wallace observed: "The act of congress
§97] REGISTRATION. 213
tration is only prima facie evidence of an admission on
the part of the g^overnment that the applicant for regis-
tration is the owner of a valid trade-mark, is not a grant
of any right or privilege, and does not, therefore, con-
clude a third party; ^ but it is conclusive as against the
registrant, as limiting and restricting what he can claim
as his trade-mark. 2 Notwithstanding its registration
under the act, the trade-mark of an insolvent will be
conveyed by a general assignment for the benefit of
creditors.^
makes the registration of the mark only prima facie evidence of own-
ership. Sec. 7. The inquiry is therefore always open as to the valid-
ity of the title to a trade-mark evidenced by the registration. The reg-
istration could not confer a title to the trade-mark upon the complain-
ant if some other corporation or individual had acquired a prior
right by adoption and use; nor could it vest defendant with a title as
against the complainant's common-law title. In this view the only
oflfice of a registration is to confer jurisdiction upon the court to pro-
tect a trade-mark when the proprietor has obtained the statutory evi-
dence of title, and the only function of the commissioner of patents is
to determine whether an applicant has a presumptive right to the
trade-mark. "
'United States v. Braun, 39 Fed. Rep. 775.
^Kohler Mfg. Co. v. Beeshore, 59 Fed. Rep. 572; Richter v. Rey-
nolds, 59 Fed. Rep. 577; 8 C. C. A. 220; Adams v. Heisel, 31 Fed.
Rep. 279-281; Kohler Mfg. Co. v. Beeshore, 53 Fed. Rep. 262-264;
Richter V. Anchor Remedy Co., 52 Fed. Rep. 455; Pittsburgh Crushed
Steel Co. V. Diamond Steel Co., 85 Fed. Rep. 637.
^Sarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624.
CHAPTER X.
COURTS, PARTIES AND CAUSES.
§98. Introductory. — In the preceding chapters we
have discussed the rights of owners or assignees of trade-
marks, and the wrongs occurring when these rights are
infringed, or, as against persons not the owners of tech-
nical trade-marks, other methods of unfair competition
are resorted to. The remainder of this work will deal
with the means by which infringers are restrained from
a continuance of their wrongdoing and forced to make
reparation for the damage they have occasioned. In
this chapter we will confine our attention to the courts
whose power may be invoked, the parties who may seek
a remedy or against whom it may be sought, and the
causes of action which may properly be brought to
determine the rights of both parties.
§ 99. Jurisdiction of United States circuit courts.
Section 7 of the act of 1881 provides that courts of the
United States shall have original and appellate jurisdic-
tion in cases involving a registered trade-mark, without
regard to the amount in controversy. It has been held
in this connection (prior to the statutes of 1887 and 1888,
which raised the "amount in controversy" necessary to
federal jurisdiction from $500 to $2,000) that the federal
courts were not limited in their trade-mark jurisdiction
to cases in which the defendant's profits had exceeded
five hundred dollars.^ And a later decision has held
that "The statute of 1881, which gives them {i. e., own-
ers of registered trade-marks) the right to commence a
suit without alleging the amount in controversy, was not
repealed by the statutes of 1887 and 1888, which make it
necessary, in order to give jurisdiction to the United
iSymonds v. Greene, 28 Fed. Rep. 834.
214
§99] COURTS, PARTIES AND CAUSES. 215
States circuit court, that the amount involved be two
thousand dollars.'"
In cases where there is diverse citizenship it does not
appear to be necessary to allege that the plaintiff uses
his trade-mark on g-oods intended for commerce with
foreign nations or with the Indian tribes; but it has been
held that the federal courts have no jurisdiction in a
trade-mark action between citizens of the same state un-
less the pleadings affirmatively show that the complain-
ant uses his trade-mark on goods intended for commerce
with foreign nations or with the Indian tribes. ^ One de-
cision declares it necessary, where both parties are citi-
zens of the same state, to aver that the defendant has ap-
plied the simulated mark to goods intended to be used in
such foreign commerce, or trade with the Indian tribes.'
Such a requirement, however, would practically invali-
date the act of 1881, and the reasoning of one of the cases
tends to show that logically no such averment in the
pleadings is necessary.* It is not necessary to show that
either party has used the mark in commerce with foreign
nations or with the Indian tribes where the parties are
of diverse citizenshii3.^
Of course, in cases involving the right to an unregis-
tered trade-mark, jurisdiction can only be acquired by
the federal courts because of the diverse citizenship of
the parties,^ and the amount in controversy, which must
be over $2,000 exclusive of interest and costs; as to trade-
marks, their jurisdiction is concurrent with that of the
the state courts. By virtue of the act of congress of
iQlotin V. Oswald, 65 Fed. Rep. 151; Garland & Ralston, Federal
Practice, sec. 122; Hennessy v. Herrmann, 89 Fed. Rep. 669.
2 Ryder v. Holt, 128 U. S. 525; Glen Cove Mfg. Co. v, Ludeling, 22
Fed. Rep. 823; Gravely v. Gravely, 52 Off. Gaz. 1538; 42 Fed. Rep.
265; Schumacher v. Schwenke, 26 Fed. Rep. 818; Luyties v. Hol-
lender, 27 Blatchf. 413.
SGravely v. Gravely, 52 Off. Gaz. 1538; 42 Fed. Rep. 265.
<Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823.
''Hennessy v. Braunschv^eiger & Co., 89 Fed. Rep. 664.
^Battle V. Finlay, 50 Fed. Rep. 106; Burt v. Smith, 71 Fed. Rep.
161; Prince's Metallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493.
216 LAW OF UNFAIR TRADE. [§99
March 3, 1887, ch. 373, as corrected by the act of August
13, 1888, ch. 866, suit cannot be brought against a cor-
poration for infringement of a trade-mark except in the
district where it is incorporated.^
Where a bill was brought to restrain infringement of
a registered trade-mark and to restrain the defendants
from unfair competition in simulating the form, size,
color and shape of cough-drops manufactured by the com-
plainants (both parties being citizens of the same state),
the United States circuit court of appeals for the second
circuit held that the fact that the trade-mark had not
been infringed deprived the circuit court of jurisdiction,
and that court had therefore erred in granting an injunc-
tion to restrain the unfair competition complained of.^
In a suit for injunction the "amount in controversy"
is the value of the object to be gained by the bill, and
not the amount of damages already suffered by the com-
plainant.^ In actions for infringement of trade-mark or
for unfair competition, therefore, the amount of profits
sought to be recovered does not determine this jurisdic-
tional question. In trade-mark cases it is the value of
the trade-mark that determines and fixes the "amount in
controversy."^ This must be specifically pleaded, be-
cause "the requisite value of the matter in controversy is
a jurisdictional fact, and it must necessarily be averred
in the declaration or bill. There are no presumptions
in favor of the jurisdiction of the federal courts, as they
are specially constituted with jurisdiction in certain
cases; and the facts upon which it rests must appear in
iRe Keasbey & Mattison Co., 160 U. S. 221; Garland & Ralston,
Federal Practice, sec. 161.
2 Burt V. Smith, 71 Fed. Rep. 161. To the same effect see Goldstein
V. Whelan, 62 Fed. Rep. 124; Luyties v. Hollender, 30 Fed. Rep.
632.
^Foster, Federal Practice (2d ed.), sec. 16. Citing Mississippi &
Mo. R. R. Co. V. Ward, 2 Black, 485; Market Co. v. Hoffman, 101
U. S. 112; Symondsv. Greene, 28 Fed. Rep. 834; Whitman v. Hubbell,
30 Fed. Rep. 81.
^Symonds v. Greene, 28 Fed. Rep. 834; Hennessy v. Herrmann, 89
Fed, Rep. 669.
§ 100] COURTS, PARTIES AND CAUSES. 217
some form in the record of all suits prosecuted before
them. They have no jurisdiction except such as the
statute confers."^
When the parties are citizens of different states, so
that the case comes within the general grant of jurisdic-
tion in the first part of the act of March 3, 1887, the de-
fendant, by entering a general appearance in a suit
brought against him in a district of which he is not an
inhabitant, waives the right to object that it is brought
in the wrong district. ^ But a corporation, by doing busi-
ness or appointing a general agent in a district other
than that in which it is created, does not waive its right,
if seasonably availed of, to insist that the suit should
have been brought in the latter district.^
The court of appeals of the District of Columbia has
no jurisdiction of trade-mark cases under section 3 of the
law of 1881.''
Federal jurisdiction in cases of unfair competition
must of course be predicated upon the general rules fix-
ing the jurisdiction of the federal courts, so that those
courts cannot entertain such an action arising between
citizens of the same state except in so far as the respond-
ent's wrongful acts affect commerce with foreign nations
or the Indian tribes; at least that is the express holding
of the circuit court of appeals for the seventh circuit.^
§ 100. Jurisdiction of the state courts. — The state
courts have a jurisdiction concurrent with that of the
federal courts in trade-mark cases. ^ It may, at times,
'Garland & Ralston, Federal Practice, sec. 122.
2 Re Keasbey & Mattison Co., 160 U. S. 221-229.
3 Re Keasbey & Mattison Co., 160 U. S. 221-229. This reverses
the ruling in Gray v. Taper-Sleeve Pulley Works, 16 Fed. Rep.
436-443, where it was held that the service of an agent of a foreign
corporation was binding, the infringement having been perpetrated
in the district where the action was instituted.
< Einstein v. Sawhill, 65 Off. Gaz. 1918.
J- IllinoisWatch Case Co. v. Elgin Nat. Watch Co. , 94 Fed. Rep.667-672.
"The supreme court of Indiana seems to have held at one time that
the jurisdiction of the state courts was exclusive. Small v. Sanders,
118 Ind. 105. It is well settled law that the jurisdiction of state
and federal courts over suits for infringement of trade-marks is con-
current. The act of March 3, 1881, conferring jurisdiction upon the
218 LAW OF UNFAIR TRADE. [§101
be advisable for a non-resident plaintiff who has secured
state registration for his mark or label to sue in the state
court in preference to the federal court; this will be de-
termined by the character of the matter for which state
registration has been secured. Several of the states
have by statute extended the definition of trade-mark to
include tickets, labels, wrappers, and other wrappings
or packages not properly trade-mark, and frequently it
will be a benefit to a complainant to avail himself of such
statutory provisions. ^ The courts of every state of the
Union have, with the exception of California, ^ always
been open to the owners of trade-marks seeking redress
and protection against piracy, without requiring state
registration as a prerequisite.
§ 101. The elements -whereon jurisdiction must be
predicated. — Lord Chancellor Brady, in the Irish high
court of chancery, in 1893, speaking of trade-mark causes,
said: "In such suits, in order to found the jurisdiction
of this court, there must be established, first, the exist-
ence of the trade-mark; next, the fact of an imitation,
whether a direct imitation, or one with such variations
that the court must regard them as merely colorable; and
thirdly, the fact that the imitations were made without
license, or anything that this court could regard as ac-
quiescence in their use."^ Mr. Sebastian refers to the
remark of Vice-Chancellor Bacon, in England, that "the
courts of the United States, in no way impaired the jurisdiction of
the state courts. Re Keasbey & Mattison Co., 160 U. S. 221; Reeder
V. Brodt, (C. P.) 4 Ohio N. P. 265; 6 Ohio Dec. 248.
i"The phrase trade-mark as used in this chapter includes every
description of word, letter, device, emblem, stamp, imprint, brand,
printed ticket, label or wrapper usually affixed by any mechanic,
manufacturer, druggist, merchant or tradesman, to denote any goods
to be imported, manufactured, produced, compounded or sold by him,
other than any name, word or expression generally denoting any
goods of some particular class or description or the designation or
name for any mill, hotel, factory or other business." And see sec.
366, Penal Code of New York, 1893; Montana Codes, 1895, vol. I, sec.
3160.
2 Whittier v. Dietz, 66 Gal. 78. This exception to the rule has since
been removed by statutory enactment.
^Kinahan v. Bolton, 15 Ir. Ch. 75-79. See also Thedford Medi-
cine Co. V. Curry, 96 Ga. 89.
§101] COURTS, PARTIES AND CAUSES. 219
law of Scotland does not in this respect differ from the
law of Eng-land"! (referring to trade-marks), as estab-
lishing, in conjunction with the above dicta of the learned
Irish chancellor, the fact that the iurisdictional princi-
ples in the three kingdoms are the same.^ The supreme
court of New York has held it error to dismiss a com-
plaint upon the pleadings and the opening of counsel
where the complaint showed the ownership of a tobacco
sample ticket used in trade by the plaintiffs, and the
wrongful use of an imitation thereof by the defendants.^
For reasons discussed elsewhere, it is not necessary to
confer jurisdiction that it be alleged that any one has
in fact been misled or deceived by the use of the simulated
mark. But the pleadings must be drawn to suit the exi-
gencies of the case; and where the facts plainly showed
that the simulated mark did not and could not deceive
either the jobber or retailer, and the fraud, if any, was
upon the ultimate purchaser, the consumer, it was proper
to aver the fact that the infringement was calculated to
deceive the consumer,* and it is probably always a better
course to aver that the imitation is calculated to deceive
the ultimate purchaser.
The real and simulated marks should be submitted
with the bill of complaint or accurately described in
appropriate terms, the main test of the alleged resem-
blance being inspection by the court ;'^ with the qualifica-
tion that the resemblance need not be such as to deceive
persons seeing the two marks side by side.*'
1 Singer Mfg. Co. v. Loog (3), L. R. 18 Ch. D. 395-404.
2 Sebastian, Trade-marks (4th ed.), 170.
sLinde v. Bensel, 22 Hun (29 N. Y. Sup. Ct.), 601.
<Drummond Tobacco Co. v. Tinsle.v Tobacco Co , 52 Mo. App. 10-
25. The court adds: "The consumer of the particular article is to be
considered almost exclusively in determining the question of infringe-
ment, because, in the case of an attempted deception, he is substan-
tially the only party likely to be deceived." Citing Sykes v. Sykes,
3 B. & Cr. 541; Farina v, Silverlock, 1 K. «fe J. 509; Rose v. Loftus,
47 L. J. Ch. 576; Singer Mfg. Co. v. Loog (3), 18 Ch. D. 395-412.
*Drummond Tobacco Co. v. Tinsley Tobacco Co., 52 Mo. App. 10-26.
6 Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. Rep. 896; McCann
V. Anthony, 21 Mo. App. 83; Drummond Tobacco Co. V. Tinsley
Tobacco Co., 52 Mo. App. 10; Hier v. Abrahams, 82 N. Y. 519.
220 LAW OF UNFAIR TRADE. [§102
§ 102. The parties plaintiff. — The action to protect a
trade-mark may be brought by its owner or a licensee.^
Trusts, constructive, implied or expressed, may arise,^ in
which case the name of the trustee would be necessary
in all suits at law affecting the legal title to the trade-
mark, and it would be his duty at all times to protect
and defend the title or allow his name to be used for that
purpose, under the established principles of law affecting
trusts.^
Individuals and corporations having a common interest
may join as parties complainant in a bill in equity to re-
strain an unfair competition in trade. Thus in a recent
case we find seven corporations located in the city of Min-
neapolis joined in a bill to restrain the fraudulent use of
names peculiar to their business and locality, by a dealer
in Chicago,* and the owners of two separate "Blue Lick
Water" springs in Kentucky joined in a bill to restrain
the use of the words "Blue Lick Water" by a third party
who had no right to their use.^ During the period of ad-
ministration the personal representative of the deceased
owner of a trademark holds the mark, as we have seen,
although it has been held in one case that it may pass
iKidd V. Johnson, 100 U. S. 617; Kidd v. Mills, 5 Off. Gaz. 337.
Where there is an exclusive licensee he must be made a party, or no