Macaulay v. Malt-Diastase Co.

• Decision Date: 06 April 1925
• Docket Number: No. 1722.,1722.
• Citation: 4 F.2d 944,55 App. DC 277
• Parties: MACAULAY v. MALT-DIASTASE CO.
• Court: U.S. Court of Appeals — District of Columbia Circuit

55 App. DC 277, 4 F.2d 944 (1925)

MACAULAY v. MALT-DIASTASE CO.

No. 1722.

Court of Appeals of District of Columbia.

Submitted March 9, 1925.

Decided April 6, 1925.

T. K. Bryant, of Washington, D. C., and O. F. Barthel, of Detroit, Mich., for appellant.

Hugo Mock, of New York City, for appellee.

Before MARTIN, Chief Justice, and ROBB and VAN ORSDEL, Associate Justices.

VAN ORSDEL, Associate Justice.

This appeal is from the decision of the Commissioner of Patents in a trade-mark interference, involving the right to register the word "Liberty" as a trade-mark for use on malt extract or malt compound, to be employed in the preparation of a beverage.

The Malt Company's testimony discloses that its first use of the mark was on a shipment of goods in interstate commerce March 29, 1919. The testimony of four witnesses, on behalf of appellant, Macaulay, establishes use of the mark in the early part of March, 1919. One witness testified to its use as early as February. Macaulay procured labels displaying the mark in January, 1919. On this evidence, the Examiner awarded registration to Macaulay, the junior party.

The Assistant Commissioner reversed the case solely on the ground that Macaulay had not established his case by documentary proof, and could not, therefore, be awarded priority over the Malt Company. Proof may be established either by oral testimony or by documentary evidence. One is as competent as the other, and if the oral testimony is sufficient to establish proof, documentary evidence is unnecessary, whether such evidence be in the possession of the party or not. In this case we agree with the Examiner that Macaulay has established a prior use of the mark as against the Malt Company.

While Macaulay proved prior ownership, he failed to establish clearly the use of the mark in interstate commerce prior to March 29, 1919. It is therefore contended that, as this is essential to the right to register, he cannot be accorded registration as against the Malt Company. This presents a rather novel question, and one that is not entirely free from difficulty. The confusion arises, we think, from the failure to distinguish between ownership and registration. The ownership of a trade-mark is based solely upon adoption and use, whether it be in interstate commerce, or intrastate commerce, or both. As was said in Trade-Mark Cases, 100 U. S. 82, 92 (25 L. Ed. 550):

"The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country, and by the statutes of some of the states. It is a property right, for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of Congress Act July 8, 1870, and does not now depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection...