Edison v. Thomas A. Edison, Jr., Chemical Co.

• Decision Date: 28 March 1904
• Docket Number: 236.
• Parties: EDISON v. THOMAS A. EDISON, JR., CHEMICAL CO.
• Court: U.S. District Court — District of Delaware

128 F. 1013

EDISON v. THOMAS A. EDISON, JR., CHEMICAL CO.

No. 236.

United States Circuit Court, D. Delaware.

March 28, 1904

Syllabus by the Court

Act March 3, 1881, c. 138, 21 Stat. 502, 1 Supp.Rev.St.p. 322 (U.S. Comp. St. 1901, p. 3401), providing for the registration of trade-marks and their protection, does not create any trade-mark, but on its face presupposes the existence of a valid trade-mark which may be registered on compliance with the requirements of the law.

If owing to non-compliance with the provisions of the act, the registration of a valid trade-mark be void, the trade-mark is not thereby nullified or injuriously affected, but still retains the nature and properties of a common law trade-mark for the infringement of which suit may be maintained in the federal courts, if the requisite diversity of citizenship exists and the requisite jurisdictional amount is involved.

Howard W. Hayes, for complainant.

William B. Whitney, for defendant.

BRADFORD District Judge.

The Thomas A. Edison, Jr., Chemical Company, a corporation of Delaware, has demurred to a bill brought against it by Thomas A. Edison, a citizen of New Jersey, for alleged infringement of a trade-mark. In substance the bill is to be effect that the complainant was December 15, 1897, and ever since has been, and now is domiciled in the United States, and was on that day, and ever since has been, and now is 'the owner of a trade-mark for phonographs, phonographic supplies kinetoscopes, kinetoscope films, numbering machines batteries, X-ray apparatus, electromedical appliances, and other philosophical and scientific apparatus, then and still used by your orator in commerce with foreign nations,' including, among others, Great Britain, France and Germany 'consisting of the autographic name 'Thomas A. Edison,' the words and letter being formed in characteristic autographic script with the loop of the first letter extending above and over the other letters constituting the mark, the essential feature of which is the word 'Edison' formed in characteristic autographic script'; that the complainant having in all respects complied with the provisions of law and the regulations prescribed by the Commissioner of Patents relating to the registration of trade-marks, duly obtained June 19, 1900, the registration and a certificate of registration of his above mentioned trade-mark for use in connection with 'phonographs, parts of phonographs, phonographic blanks, kinetoscopes, kinetoscope-films, numbering-machines, batteries, X-ray apparatus, and electromedical appliances'; that since the registration of his trade-mark the complainant has manufactured and sold large numbers of batteries and electromedical...