Prince's Metallic Paint Co. v. Prince Mfg. Co.

• Decision Date: 23 December 1892
• Docket Number: 28.
• Citation: 53 F. 493
• Parties: PRINCE'S METALLIC PAINT CO. v. PRINCE MANUF'G CO. et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

53 F. 493

PRINCE'S METALLIC PAINT CO. v. PRINCE MANUF'G CO. et al.

No. 28.

United States Circuit Court, E.D. Pennsylvania.

December 23, 1892

Charles Barclay and John G. Johnson, for complainant.

Richard C. Dale, for respondents.

BUTLER District Judge.

The cause of action set out is the infringement of a common-law trade-mark, registered in pursuance of the federal statute of 1881. The defense consists in a denial of our jurisdiction and of the plaintiff's title, an allegation that he is concluded by a decision of the court of appeals of New York (31 N.E. 990,) and by laches in asserting his alleged rights. The facts involved are so well stated in the opinion of the court of appeals, (which is made a part of the record,) that no more need be said on this subject.

Have we jurisdiction? The plaintiff and the principal defendant are citizens of Pennsylvania. To give us jurisdiction it must therefore appear that a federal cause of action is set out. The breach of a common-law trade-mark is not such a cause. While registration is averred there is no charge of infringing the plaintiff's rights under it. Such registration protects the use of the mark in foreign commerce and with Indian tribes; nothing more. It would seem therefore to follow very plainly that the facts necessary to confer jurisdiction are not averred. The bill is drawn precisely as if for trial in the state courts; and presents a proper cause of action for these tribunals. It seems to have been supposed that we can redress injuries resulting from trespass on the plaintiff's common-law rights. That we cannot is clear we think, on principle, and has been so decided. Schumacher v. Schwencke, 26 F. 818. Indeed the facts seems to be admitted in the plaintiff's brief at page 4.

After the defendants' evidence was in, the plaintiff supplemented their proof with a view to showing infringement in foreign commerce. This evidence called for no answer under the pleadings, and is therefore deemed irrelevant. But the infringement shown is, at best, so slight that even if the necessary averments were made we think the bill should not be entertained. It is virtually immaterial. The real controversy is about the common-law trade-mark, and its use by the defendants in domestic commerce. This fact is very clear. In the New York suit the plaintiff's answer asserts that the principal market for the paint is in New York; and the sales of both parties are almost...