American Steel Foundries v. Robertson

• Decision Date: 04 January 1926
• Docket Number: No. 156,156
• Citation: 269 U.S. 372,70 L.Ed. 317,46 S.Ct. 160
• Parties: AMERICAN STEEL FOUNDRIES v. ROBERTSON, Commissioner of Patents, et al
• Court: U.S. Supreme Court

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.

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] Mr. Justice SUTHERLAND delivered the opinion of the Court.

Plaintiff and its predecessor, and Simplex Railway Appliance Company, have used the trade-mark 'Simplex' 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- 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. 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 goods or his business as the goods or business of another.

Whether the name of a corporation is to be regarded as a trade-mark, a trade-name, or both, is not entirely clear under the decisions. To some extent the two terms overlap, but there is a difference, more or less definitely recognized, which is that, generally speaking, the former is applicable to the vendible commodity to which it is affixed, the latter to a business and its good will. See Ball v. Broadway Bazaar, 194 N. Y. 429, 434, 435, 87 N. E. 674. A corporate name seems to fall more appropriately into the latter class. But the precise difference is not often material, since the law affords protection against its appropriation in either view, upon the same fundamental principles. The effect of assuming a corporate name by a corporation under the law of its creation is to exclusively appropriate that name. It is an element of the corporation's existence. Newby v. Oregon Cent. Ry. Co. et al., Deady, 609, 616, 18 Fed. Cas. 38, No. 10,144. And, as Judge Deady said in that case:

'Any act which produces confusion or uncertainty concerning this name is well calculated to injuriously affect the identity and business of a corporation. And as a matter of fact, in some degree, at least, the natural and necessary consequence of the wrongful appropriation of a corporate name, is to injure the business and rights of the corporation by destroying or confusing its identity.' The general doctrine is that equity not only will enjoin the appropriation and use of a trade-mark or trade-name, where it is completely identical with the name of the corporation, but will enjoin such appropriation and use where the resemblance is so close as to be likely to produce confusion as to such identity, to the injury of the corporation to which the name belongs. Cape May Yacht Club v. Cape May Yacht & Country Club. 81 N. J. Eq. 454, 458, 86 A. 972; Armington & Sims v. Palmer, 21 R. I. 109, 115, 42 A. 308, 43 L. R. A. 95, 79 Am. St. Rep. 786. Judicial...