Robertson v. United States ex rel. Baldwin Co.

• Decision Date: 05 February 1923
• Docket Number: 3854.
• Citation: 287 F. 942
• Parties: ROBERTSON, Commissioner of Patents (R.S. HOWARD CO., Intervener), v. UNITED STATES ex rel. BALDWIN CO.
• Court: U.S. Court of Appeals — District of Columbia Circuit

287 F. 942

ROBERTSON, Commissioner of Patents (R.S. HOWARD CO., Intervener), v. UNITED STATES ex rel. BALDWIN CO.

No. 3854.

United States Court of Appeals, District of Columbia.

February 5, 1923

Submitted January 5, 1923.

Appeal from the Supreme Court of the District of Columbia.

Samuel S. Watson, of New York City, and T. A. Hostetler, of Washington, D.C., for appellants.

F. D McKenney and J. S. Flannery, both of Washington, D.C., and John E. Cross, of Baltimore, Md., for appellee.

Before SMYTH, Chief Justice, and ROBB and VAN ORSDEL, Associate justices.

SMYTH Chief Justice.

The Baldwin Company claimed to be the owner of two trade-marks used on pianos, which were registered in the Patent Office. Two proceedings to have the marks canceled were instituted by R. S. Howard Company, one of the appellants. Relief was denied it by the Commissioner of Patents, but on appeal to this court his decision was reversed, and the Commissioner was so advised, as provided by statute. 33 Stat. 727, Sec. 9 (Comp. St. Sec. 9494); section 4914 et seq., Revised Statutes (Comp. St. Sec. 9459 et seq.). From our action the Baldwin Company appealed to the Supreme Court of the United States and also prayed for writs of certiorari.

The appeals were dismissed and the writs of certiorari denied, for the reason that our decision was not final. Judicial Code, Secs. 250, 251 et seq. (Comp. St. Secs. 1227, 1228 et seq.). Thereupon the Baldwin Company filed its bill in equity against Hon. Thomas E. Robertson, as Commissioner of Patents, in the Supreme Court of the District, basing its right to do so upon section 9 of the trade-mark statute (33 Stat. 727), and sections 4914 and 4915 of the Revised Statutes. The bill as amended sought to restrain the Commissioner from canceling the marks in accordance with our decision, and prayed that, pending the final disposition of the case, he be enjoined from canceling them. On its petition the R. S. Howard Company was permitted to intervene. The Commissioner of Patents and the latter company filed separate answers. The Commissioner asserted, among other things, that he was bound by the decision of this court. The Howard Company went into its case with much elaboration, and then moved to dismiss the amended bill on several grounds, among them being one to the effect that the court was without authority to grant the relief asked for, or any relief in the premises. The motion having been overruled, a preliminary injunction went out, restraining the Commissioner of Patents as prayed, and the Howard Company brought the case here for our review by special appeal. 27 Stat. 436 (Comp. St. Sec. 1227).

The case turns upon the jurisdiction of the Supreme Court of the District to entertain the suit. Registration of trade-marks, opposition to registration, cancellation of registration, and interference proceedings are all governed by statute. 33 Stat. 724 et seq. (Comp. St. Sec. 9485 et seq.). The solution of any question which arises with respect to these matters must be in harmony with the terms of the statute Lincoln v. Virginia Portland Cement Co., 258 F. 505, 49 App.D.C. 33; Moore v. United States, 249 U.S. 487, 39 Sup.Ct. 322, 63 L.Ed. 721; United States v. Temple, 105 U.S. 97, 26 L.Ed. 967. If there is no statutory authority for bringing the suit, then the action of the lower court must be reversed and the amended bill dismissed.

It is asserted by the Baldwin Company that section 9 of the Trade-Mark Act and sections 4914 and 4915, Revised Statutes, supra, when considered together, authorize the suit. Section 9 says that if a--

'party to an application for the cancellation of the registration of a trade-mark is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the Court of Appeals of the District of Columbia, on complying with the conditions required in case of an appeal from the decision of the Commissioner by an applicant for patent, or a party to an interference as to an invention, and the same rules of practice and procedure shall govern in every stage of such proceedings, as far as the same may be applicable. ' (Italics supplied.)

When this court was organized in 1893 (27 Stat. 434), the determination of appeals from the decisions of the Commissioner of Patents, then vested in the Supreme Court of the District of Columbia, was transferred to this court. 27 Stat. 436, Sec. 9. Section 4914, R.S., provides that, when this court determines an appeal from the Commissioner of Patents in patent cases, it 'shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office, and shall govern the further proceedings in the case,' and adds:

'But no opinion or decision of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question.'

Section 4915 says that, whenever a patent is refused by the Commissioner of Patents or by this court, 'the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear,' and that such adjudication, if in favor of the right of the applicant, shall authorize the Commissioner to issue a patent to him when he has complied with certain other requirements of the statute.

It will be observed that section 9 of the trade-mark statute, supra, so much relied upon by the Baldwin Company, deals with appeals from the Commissioner of Patents to this court, and declares that the rules of practice and procedure in patent cases shall govern in every state of 'such proceedings' as far as they may be applicable. What proceedings? Clearly, the proceedings followed in taking the appeals just mentioned. There is nothing in it which purports to deal with what shall happen after an appeal has been determined. Section 4914 says that no decision by this court shall preclude any person interested from the right to contest the validity of a patent 'in any court wherein the same may be called in question. ' This relates to something that may take place after the decision of this court. and has no relation to proceedings in an appeal from the Commissioner to this court. And what is said with respect to this section may also be said with respect to section 4915, which deals with patent cases after they have been disposed of by this court or by the Commissioner in case no appeal is taken to this court. There is nothing in it which relates to an appeal from the Commissioner to this court, and therefore it cannot affect 'such proceedings.' Besides, Congress has provided by section 22 of the trade-mark statute (33 Stat. 729 (Comp. St. Sec. 9507)) for proceedings in equity after a case has been finally disposed of by this court. It is there declared that:

'Whenever there are interfering registered trade-marks, any person interested in any one of them may have relief against the interfering registrant, and all persons interested under him, by suit in equity against the said registrant.'

But no provision is made for a suit in equity in a case such as the one before us. Does not this call for the application of the maxim, 'Expressio unius est exclusio alterius'?

There is a good reason why Congress should have provided for equitable relief in patent cases as it has done in section 4915 without making a like provision for trade-mark cases. If the section did not exist, the applicant for a patent would be concluded by the decision of this court holding that his invention was not patentable. He might manufacture and put it on the market, and successfully defeat any one who might charge him with being an infringer, but he could not obtain a monopoly himself. Brown v. Duchesne, 19 How. 183, 15 L.Ed. 595; Dable Grain Shovel Co. v. Flint, 137 U.S. 41, 11 Sup.Ct. 8, 34 L.Ed. 618. Against his will his invention could be made and vended by anybody with impunity. Moreover, a patent conveys a property right to the inventor. Imperial Cotto Sales Co. v. N. K. Fairbanks Co., 270 F. 686, 50 App.D.C. 250; Shaw v. Cooper, 7 Pet. 292, 8 L.Ed. 689: Cammeyer v. Newton, 94 U.S. 225, 24 L.Ed. 72. To be denied a patent is to be denied this right, which may be very valuable.

In the case of a trade-mark the situation is entirely different. The registration of a mark conveys no property right (Sarrazin v. W. R. Irby Cigar & Tobacco Co., 93 F 624, 35 C.C.A. 496, 46 L.R.A. 541; Hanover Star Milling Co. v. Allen & Wheeler Co., 208 F. 513, 125 C.C.A. 515, L.R.A. 1916D, 136; Andrew Jergens Co. v. Woodbury, Inc. (D.C.) 273 F. 952, 965) and its cancellation takes none away. Ownership of the mark depends upon its adoption and use, not on its registration. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 14 Sup.Ct. 151, 37 L.Ed. 1144; Phillips v. Hudnut et al., 263 F. 643, 49 App.D.C. 247. The only effect of the registration is to raise a rebuttable presumption in favor of the registrant's ownership. Section 16 of the Trade-Mark Act says that the registration of a trade-mark shall be prima facie evidence of ownership. 33 Stat. 728 (Comp. St. Sec. 9501). If, in a contest between a registrant and one who is using the same mark upon the same class of goods, the latter can establish that he is the owner of the mark, the registration of it will avail the other party nothing. The right to a patent originates in the statute. The right to a trade-mark exists independently of a statute and comes into existence by reason of its adoption and use. See authorities ante. Under section 4915 the...