Thaddeus Davids Company v. Cortlandt Davids
| Decision Date | 27 April 1914 |
| Docket Number | No. 184,184 |
| Citation | 34 S.Ct. 648,233 U.S. 461,58 L.Ed. 1046 |
| Parties | THADDEUS DAVIDS COMPANY, Petitioner, v. CORTLANDT I. DAVIDS and Walter I. Davids, Trading as Davids Manufacturing Company |
| Court | U.S. Supreme Court |
Mr. W. P. Preble for petitioner.
Mr. Emerson R. Newell for respondents.
[Argument of counsel from page 462 intentionally omitted] Mr. Justice Hughes delivered the opinion of the court:
Thaddeus Davids Company, manufacturer of inks, etc., brought this suit for the infringement of its registered trademark 'DAVIDS." It was alleged that the complainant was the owner of the trademark; that it had been used in interstate commerce by the complainant and its predecessors in business for upwards of eighty years; that on January 22, 1907, it had been registered by the com- plainant as a trademark, applicable to inks and stamp pads, under the act of February 20, 1905 (chap. 592, 33 Stat. at L. 724, U. S. Comp. Stat. Supp. 1911, p. 1459); that the complainant was entitled to such registration under § 5 of the act by reason of actual and exclusive use for more than ten years prior to the passage of the act; and that the defendants, Cortlandt I. Davids and Walter I. Davids, trading as Davids Manufacturing Company, were putting inks upon the market with infringing labels. The bill also charged unfair competition. Upon demurrer, the validity of the trademark was upheld by the circuit court of appeals (102 C. C. A. 249, 178 Fed. 801), and on final hearing, upon pleadings and proofs, complainant had a decree. 190 Fed. 285. This decree was reversed by the circuit court of appeals, which held that there was no infringement of the registered trademark, and that the suit, if regarded as one for unfair competition, was not within the jurisdiction of the court, the parties being citizens of the same state. 114 C. C. A. 355, 192 Fed. 915. Certiorari was granted.
As the mark consisted of an ordinary surname, it was not the subject of exclusive appropiration as a common-law trademark (Brown Chemical Co. v. Meyer, 139 U. S. 540, 542, 35 L. ed. 247, 248, 11 Sup. Ct. Rep. 625; Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118, 134, 135, 49 L. ed. 972, 984, 25 Sup. Ct. Rep. 609); and the complainant derived its right from the fourth proviso of § 5. This section, at the time of the registration, was as follows:1
'(a) Consists of or comprises immoral or scandalous matter;
'(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or any simulation thereof, or of any state or municipality, or of any foreign nation: Provided, That trademarks which are identical with a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trademark owned and in use 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 to deceive purchasers, shall not be registered: Provided, That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term, shall be registered under the terms of this act: Provided further, That no portrait of a living individual may be registered as a trademark, except by the Consent of such individual, evidenced by an Instrument in writing: And provided further, 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 trademark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this act.'
The fourth proviso, or ten-year clause, has manifest reference to marks which are not technical trademarks; otherwise, it would have no effect. The owner of a trademark valid at common law and used in commerce with foreign nations, or among the several states, or with Indian tribes, may obtain its registration under the act without showing the user of ten years required by this clause. Secs. 1, 2. Congress evidently had in mind the fact that marks, although not susceptible of exclusive appropriation at common law, frequently acquired a special significance in connection with particular commodities; and the language of the fourth proviso was carefully chosen in order to bring within the statute those marks which, while not being technical trademarks, had been in 'actual and exclusive use' as trademarks for ten years next preceding the passage of the act.2 See Re Cahn, 27 App. D. C. 173, 177; Worster Brewing Corp. v. Rueter, 30 App. D. C. 428, 430, 431; Re Wright, 33 App. D. C. 510.
It is suggested, however, that the privilege accorded by this proviso is limited to marks which lie outside the positive prohibitions contained in the earlier clauses of § 5. Thus, it is said that the exceptions with respect to marks of a scandalous sort, and as to those embracing public insignia, are plainly intended to apply to all marks of the described character, whether or not they had been used for the preceding ten years (Re Cahn, supra); and it is urged that if this be so, the prohibitions of the provisos which precede the ten-year clause must likewise be deemed to restrict its scope. The emphasis in the present case is placed upon the second proviso in § 5. This, in substance, prohibits the registration of marks consisting merely of individual, firm, or corporate names, not written or printed in a distinctive manner, or of designations descriptive of the character or quality of the goods with which they are used, or of geographical names or terms; and it thus contains, as the court of appeals said, 'a fairly complete list' of the marks used by dealers in selling their goods, which are not valid trademarks at common law. If the ten-year proviso be construed as not to apply to any marks within this comprehensive description, the clause would have little or nothing to act upon, and we can conceive of no reason for its insertion.
We think that the intent of Congress is clear. In the opening clause of § 5, it is provided that no mark by which the goods of the owner may be distinguished from other goods of the same class shall be refused registration as a trademark, on account of its nature, unless it consists of, or comprises: (a) immoral or scandalous matter; or (b) certain public insignia. The marks within these excepted classes are withdrawn from the purview of the act. Then in dealing with the marks which remain, limitations upon registrability are defined by the first, second, and third provisos; and the restrictions thus imposed are in turn qualified by the fourth proviso or ten-year clause. It follows that the fourth proviso in no way detracts from the force of the exceptions contained in clauses (a) and (b) which were plainly intended to be established without qualification; but the generality of the succeeding prohibitions is qualified. It may well be that this qualification, by reason of its terms, does not affect the first proviso, which relates to cases of conflicting trademarks, as the ten-year clause explicitly requires that the use shall have been 'exclusive.' But there can be no doubt that this clause does modify the general limitations contained in the second proviso with respect to the use of marks consisting of names of persons, firms, or corporations, of terms descriptive of character and quality, or of geographical names or terms. Marks of this sort, notwithstanding the general prohibition, were made registrable when the applicant or his predecessors had used them, actually and exclusively, as trademarks for the described period.
In this view, the complainant was entitled to register its mark. We need not stop to discuss the contention that the complainant's use had not been exclusive, or that the mark had not been used in interstate commerce, or the further defense that the complainant should be denied relief because it had deceived the public. It is enough to say that these contentions were without adequate support in the evidence and were properly overruled by the circuit court.
Having the right to register its mark, the...
To continue reading
Request your trial
-
Brooks Bros. v. Brooks Clothing of California
...9 Cir., 1934, 71 F.2d 766; General Baking Co. v. Goldblatt Bros., 7 Cir., 1937, 90 F.2d 241. 13 Thaddeus Davids Co. v. Davids Mfg. Co., 1914, 233 U.S. 461, 34 S.Ct. 648, 58 L.Ed. 1046; Rossmann v. Garnier, 8 Cir., 1914, 211 F. 401; Manitou Springs Mineral Water Co. v. Schueler, 8 Cir., 1917......
-
Philco Corporation v. Phillips Mfg. Co.
...believe it is clear that Congress has the power to legislate upon the substantive law of trade-marks. Thaddeus Davids Co. v. Davids, 233 U.S. 461, 468-471, 34 S.Ct. 648, 58 L.Ed. 1046 (by implication); Rossmann v. Garnier, 8 Cir., 211 F. 401, 405; cf. Trade-Mark Cases, supra, 100 U.S. page ......
-
Stix Products, Inc. v. United Merchants & Mfrs., Inc.
...F.Supp. 621, 629-630 (S.D.N.Y.1953), aff'd on opinion below, 210 F.2d 953 (2d Cir. 1954). 16 See Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461, 472, 34 S.Ct. 648, 58 L.Ed. 1046 (1914) ("Davids" infringed by "C. I. Davids"); Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F. ......
-
Dixi-Cola Laboratories v. Coca-Cola Co.
...and its secondary, as distinguished from its primary significance, is still open to question. Thaddeus Davids Co. v. Davids Mfg. Co., 233 U.S. 461, 34 S.Ct. 648, 58 L.Ed. 1046, Ann.Cas.1915B, 322; Trade-Mark Cases, 1879, 100 U.S. 82, 92, 25 L.Ed. 550; American Trading Co. v. Heacock Co., 19......