Proceedings under the Trade-Mark Act of February 20, 1905, c.
592, 33 Stat. 724, and the specific provision of § 9 thereof,
are governed by the same rule of practice and procedure as in the
instance of patents, and decision of the Court of Appeals of the
District of Columbia on appeals from the Commissioner of Patent are
not reviewable by the Court.
Frasch v. Moore, 211 U. S.
1, followed;
Gaines v. Knecht & Son, 27
App.D.C. 530, approved.
Plaintiffs filed their application for a trademark on June 12,
1905, in which it was recited that --
"The trademark consists of a symbol composed of the letters
'AAA.' . . . The trademark is usually displayed on the goods by
etching, stamping, or otherwise marking the same upon the blade of
the saw, and by inscribing same upon the packages containing such
saws."
This was amended August 30, 1905, by adding the sentence -- "The
trademark is shown with the letters arranged in the form of a
monogram."
Page 212 U. S. 286
The examiner suggested that the description of the trademark
should be amended so as to read -- "The trademark consists of a
monogram composed of the letters
AAA'."
Plaintiffs declined to comply with the suggestion, and appealed
from the ruling of the examiner that such amendment should be made
to the Commissioner of Patents, who, on February 20, 1906,
overruled the decision of the examiner, and held that the
description was sufficient.
April 27, 1906, plaintiffs were notified that their
"application for the registration of a trademark for a symbol
composed of the letters 'AAA,' for saws of all kinds, filed June
12, 1905, Ser. No. 7998, has been examined and passed for
publication, in compliance with § 6 of the act authorizing the
registration of trademarks approved February 20, 1905. The mark
will be published in the Official Gazette of May 15, 1906."
The Act of February 20, 1905, 33 Stat. 724, c. 592, § 1,
provided that the applicant should file an application in writing,
which should contain, among other things:
"A description of the trademark itself and a statement of the
mode in which the same is applied and affixed to goods, and the
length of time during which the trademark has been used. With this
statement shall be filed a drawing of the trademark, signed by the
applicant or his attorney, and such number of specimens of the
trademark, as actually used, as may be required by the Commissioner
of Patents."
This act was amended by the Act of May 4, 1906, 34 Stat. 168, c.
2081, § 1, by inserting after the words "description of the
trademark itself" the words "only when needed to express colors not
shown in the drawing."
On June 21, 1906, the Patent Office sent plaintiffs the
following communication:
"Attention is directed to the Act approved May 4, 1906,
providing for a description of the trademark itself only when
needed to express colors not shown in the drawing. "
Page 212 U. S. 287
"Inasmuch as the trademark covered by this application cannot be
registered until after July 1, 1906, when said act takes effect,
applicant should direct the cancellation of the present description
and of all of the preamble to the statement following the words
'have adopted for my use,' and the substitution therefor of the
following words: 'the
trademark shown in the accompanying
drawing.'"
"If colors form a material part of the mark, a brief reference
thereto should follow."
"An amendment as above indicated should be promptly filed to
avoid delay in the use of the certificate."
Plaintiffs refused to comply with this suggestion, and, on July
16, 1906, the examiner declined to pass the application for
registration.
A petition was thereupon presented by plaintiffs to the
Commissioner, seeking the overruling of the action of the examiner,
and, on November 22, 1906, the petition was denied.
An appeal was prosecuted to the Court of Appeals, which affirmed
the decision of the Commissioner of Patents, and directed the clerk
to "certify this opinion to the Commissioner of Patents, according
to law."
An appeal and a writ of error were allowed.
Page 212 U. S. 289
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
In
Frasch v. Moore, 211 U. S. 1, it was
held that decisions in the Court of Appeals of the District of
Columbia in appeals from the Commissioner of Patents under § 9
of the Act of February 9, 1893, c. 74, 27 Stat. 434, 436, were
interlocutory, and not final, and not reviewable by this Court
under § 8 of that act because not final judgments or decrees
within the meaning of that section. When certified to the
Commissioner of Patents, they "govern the further proceedings in
the case" (Revised Statutes, § 4914), but are not final
judgments or decrees at law or in equity within the purview of
§ 8.
In
Gaines & Company v. Knecht & Son, post, p.
561, we applied the same rule to a writ of error to the decision of
the Court of Appeals, rendered on appeal to that court from a
decision of the Commissioner of Patents in proceedings arising
under an application for a trademark, contenting ourselves with
this memorandum, announced December 14, 1908:
"Writ of error dismissed for want of jurisdiction.
Frasch v.
Moore, supra; see Act of February 20, 1905, for the
registration of trademarks, 33 Stat. 724, c. 592, sections 9, 16-18
et passim."
Section 9, there referred to, provides:
"That if an applicant for 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 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. "
Page 212 U. S. 290
Gaines v. Knecht was a case of opposition to the
registration of a trademark under §§ 6 and 7 of the Act
of February 20, 1905, the objections being that the act was
unconstitutional and also that the applicant's mark was so similar
to the mark of opponent that it would be likely to lead to
confusion and enable applicant to perpetrate a fraud on the public.
The examiner of interferences dismissed the opposition, and from
his decision the case was appealed to the Commissioner, who
affirmed the decision. An appeal was then taken to the Court of
Appeals, and that court affirmed the Commissioner and "ordered that
this decision and the proceedings in this Court be certified to the
Commissioner of Patents, as required by law." The court said, among
other things, that the appeal was
"an appeal from the decision of an officer of the executive
department, performing a ministerial act. He has treated the
statute as valid, and so he ought to have treated it until it is
otherwise determined by the courts. . . . It may be true that the
Commissioner acts in a judicial capacity in determining whether the
applicant is the owner of the trademark, and whether it is one of
those marks the registration of which is prohibited, but, when he
has determined these in favor of the applicant, the act to be
performed by him is ministerial merely, and that is the act which
it is claimed he should have refused to perform, on the ground that
the statute is unconstitutional. Such judicial proceedings as there
are issue and culminate in a purely ministerial act -- the mere
registration of a mark -- which, if the statute is void, cannot
possibly prejudice the right of the opponent or of anyone else. It
is not as if the culminating act interfered with the person or
property of others. We sit to review the action of the officer from
the same standpoint which he was bound to take. Although the case
is now before a court, the case itself is not changed, nor are the
rules changed by which it should be decided. It is for this court
to say merely whether his decision was right or wrong. We think he
did not err in treating the act as valid. When some case shall
arise in which rights of person or property must be affected by the
decision,
Page 212 U. S. 291
it will become necessary to consider the question now attempted
to be raised; but to pass upon it now would be to decide a question
of theory alone, and this is not the province of a court."
27 App.D.C. 530.
In the light of the various details of the Act of February 20,
1905, and of the specific provisions of § 9, we were of
opinion that proceedings under the act were governed by the same
rules of practice and procedure as in the instance of patents, and
the writ of error was accordingly dismissed. The same result must
follow in the present case.
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.
Appeal and writ of error dismissed.
