American Steel Foundries v. Robertson, No. 156

CourtUnited States Supreme Court
Writing for the CourtSUTHERLAND
Citation269 U.S. 372,70 L.Ed. 317,46 S.Ct. 160
PartiesAMERICAN STEEL FOUNDRIES v. ROBERTSON, Commissioner of Patents, et al
Decision Date04 January 1926
Docket NumberNo. 156

269 U.S. 372
46 S.Ct. 160
70 L.Ed. 317
AMERICAN STEEL FOUNDRIES

v.

ROBERTSON, Commissioner of Patents, et al.

No. 156.
Argued Nov. 16 and 17, 1925.
Decided Jan. 4, 1926.

Page 373

Mr. George L. Wilkinson, of Chicago, Ill., for American Steel foundries.

Messrs. Nathan Heard and Frederick A. Tennant, both of Boston, Mass., for Simplex Electric Heating Co.

[Argument of Counsel from pages 373-376 intentionally omitted]

Page 377

Mr. Justice SUTHERLAND delivered the opinion of the Court.

Plaintiff and its predecessor, and Simplex Railway Appliance Company, have used the trade-mark 'Simplex'

Page 378

on railway car bolsters since 1897, and on car couplers since 1907; the former being registered in the Patent Office in 1911, the latter in 1909. In 1917 plaintiff adopted and thereafter used the same trade-mark on brake rigging, brake heads, brake beams, brake shoes, brake hangers, and clasp brakes. Application was made in 1917 to register the trade-mark for the last-named uses, but the Commissioner of Patents refused the registration, on the ground that the trade-mark consisted merely in the name of a corporation, viz. the Simplex Electric Heating Company, defendant herein. The Commissioner's ruling was affirmed by the Court of Appeals of the District of Columbia. In re American Steel Foundries, 49 App. D. C. 16, 258 F. 160. The case came to this court on certiorari, but was dismissed for want of jurisdiction, sub nom. American Steel Foundries v. Whitehead, Commissioner of Patents, 256 U. S. 40, 41 S. Ct. 407, 65 L. Ed. 818.

Thereupon this suit in equity was brought in the federal District Court for the Northern District of Illinois, under section 4915, R. S. being Comp. St. § 9460 (American Foundries v. Robertson, 262 U. S. 209, 43 S. Ct. 541, 67 L. Ed. 953), to which the Commissioner of Patents voluntarily appeared. That court dismissed the bill, and an appeal to the Court of Appeals followed.

The defendant company was organized as a corporation in 1902. Its predecessors in business had adopted in 1886, and thereafter had used, the trade-mark 'Simplex' on insulating or protected conducting wire, the same being registered in 1890. In 1906, the company registered trade-marks comprising the word 'Simplex' as applied to a large variety of other goods.

The word 'Simplex' has comprised the whole or a part of trade-marks registered in the Patent Office in approximately 60 registrations by nearly as many different parties, and as applied to many classes of merchandise. There are other corporations in the country, which now have or have had names which embody the word 'Sim-

Page 379

plex.' Neither the defendant company nor its predecessors ever have been engaged in the manufacture or sale of any of the devices upon which plaintiff has used the trade-mark as hereinbefore specified.

Upon these facts the court below has certified the following questions upon which it desires instruction:

'1. Does the clause of section 5 of the Trade-Mark Act of February 20, 1905, '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 an individual * * * shall be registered under the terms of this act,' prohibit registration as a trade-mark under said act of the word 'Simplex' by the plaintiff under the recited facts?

'2. Does the said clause quoted of section 5 prohibit registration under the Act of February 20, 1905, of a trade-mark consisting solely of a single word, otherwise registrable under the said act, if that word is the salient feature of the name of a corporation, not the applicant for registration?

'3. Does the above-quoted clause of section 5 of the Trade-Mark Act of February 20, 1905, prohibit the registration under said act of a common-law trade-mark which is the name, or part of the name, of another than the applicant, whose business relates exclusively to goods in a different and noncompeting class from the goods on which the trade-mark is used by the applicant?'

For the purposes of discussion, these three questions may be resolved shortly into one: Upon the facts, is the word 'Simplex' merely the name of the Simplex Electric Heating Company within the meaning of the quoted proviso? The answer to this question will be simplified if we approach it by first considering certain principles of the substantive law of trade-marks and unfair competition, in the light of which the legislation under review must be examined.

Page 380

The mere fact that one person has adopted and used a trade-mark on his goods does not prevent the adoption and use of the same trade-mark by others on articles of a different description. There is no property in a trade-mark apart from the business or trade in connection with which it is employed. United Drug Co. v. Rectanus Co., 248 U. S. 90, 97, 39 S. Ct. 48, 63 L. Ed. 141; Hanover Milling Co. v. Metcalf, 240 U. S. 403, 413-414, 36 S. Ct. 357, 360 (60 L. Ed. 713). 'The law of trade-marks is but a part of the broader law of unfair competition' (Id.), the general purpose of which is to prevent one person from passing off his...

To continue reading

Request your trial
220 practice notes
  • Food for human consumption: Food labeling— Dietary supplements; effect on structure or function of body; types of statements, definition,
    • United States
    • Federal Register January 06, 2000
    • January 6, 2000
    ...property, but only insofar as they are associated with the goodwill of an ongoing business. (See American Steel Foundries v. Robertson, 269 U.S. 372, 380 (1926).) They have no intrinsic value. The purpose of a trademark or trade name is to prevent confusion with the products of another manu......
  • National Fruit Product Co. v. Dwinell-Wright Co., Civil Action No. 1445.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • October 16, 1942
    ...964; California Fruit Growers Exch. v. Windsor Beverages, Ltd., 7 Cir., 118 F.2d 149, 153. Compare American Steel Foundries v. Robertson, 269 U.S. 372, 381, 46 S.Ct. 160, 70 L.Ed. 317; B. F. Goodrich Co. v. Hockmeyer, 40 F.2d 99, 103, 17 C.C.P.A., Patents, 1068. It was implicit in a host of......
  • Quality Courts United v. Quality Courts, Civ. A. No. 5064.
    • United States
    • United States District Courts. 3th Circuit. United States District Court of Middle District of Pennsylvania
    • March 15, 1956
    ...Rubber Co., 1888, 128 U.S. 598, at page 603, 9 S.Ct. 166, 32 L.Ed. 140 F. Supp. 350 535; American Steel Foundries v. Robertson, 1926, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317, gives defendant any right to compete The essence of the wrong is the representation that defendant's court is ......
  • Lawyers Title Ins. Co. v. Lawyers Title Ins. Corporation, No. 7329.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • October 16, 1939
    ...of unfair competition in mind when it enacted the Trade-Mark Act. Sutherland, J., in American Steel Foundries v. Robertson, 1926, 269 U.S. 372, 381, 46 S.Ct. 160, 162, 70 L.Ed. 317, a dictum going so far as to confine the power of Congress to legislate regarding "the substantive law of trad......
  • Request a trial to view additional results
219 cases
  • National Fruit Product Co. v. Dwinell-Wright Co., Civil Action No. 1445.
    • United States
    • United States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts
    • October 16, 1942
    ...964; California Fruit Growers Exch. v. Windsor Beverages, Ltd., 7 Cir., 118 F.2d 149, 153. Compare American Steel Foundries v. Robertson, 269 U.S. 372, 381, 46 S.Ct. 160, 70 L.Ed. 317; B. F. Goodrich Co. v. Hockmeyer, 40 F.2d 99, 103, 17 C.C.P.A., Patents, 1068. It was implicit in a host of......
  • Quality Courts United v. Quality Courts, Civ. A. No. 5064.
    • United States
    • United States District Courts. 3th Circuit. United States District Court of Middle District of Pennsylvania
    • March 15, 1956
    ...Rubber Co., 1888, 128 U.S. 598, at page 603, 9 S.Ct. 166, 32 L.Ed. 140 F. Supp. 350 535; American Steel Foundries v. Robertson, 1926, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317, gives defendant any right to compete The essence of the wrong is the representation that defendant's court is ......
  • Lawyers Title Ins. Co. v. Lawyers Title Ins. Corporation, No. 7329.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • October 16, 1939
    ...of unfair competition in mind when it enacted the Trade-Mark Act. Sutherland, J., in American Steel Foundries v. Robertson, 1926, 269 U.S. 372, 381, 46 S.Ct. 160, 162, 70 L.Ed. 317, a dictum going so far as to confine the power of Congress to legislate regarding "the substantive law of trad......
  • Lebas Fashion Imports of USA, Inc. v. ITT Hartford Ins. Group, No. B083983
    • United States
    • California Court of Appeals
    • October 29, 1996
    ...of doing business" and are protected under the same principles as trademark law. (See, e.g., American Steel Foundries v. Robertson (1926) 269 U.S. 372, 380, 46 S.Ct. 160, 162, 70 L.Ed. 317 ["[trademark] is applicable to the vendible commodity [while trade name is applicable to] a business a......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT