United States Baldwin Co v. Robertson

• Citation: 68 L.Ed. 962,44 S.Ct. 508,265 U.S. 168
• Decision Date: 26 May 1924
• Docket Number: No. 251,251
• Parties: UNITED STATES ex rel. BALDWIN CO. v. ROBERTSON, Commissioner of Patents, et al
• Court: United States Supreme Court

265 U.S. 168

44 S.Ct. 508

68 L.Ed. 962

UNITED STATES ex rel. BALDWIN CO.

v ROBERTSON, Commissioner of Patents, et al.

No. 251.

Argued April 29, 1924.

Decided May 26, 1924.

Messrs. Frederic D. McKenney, J. S. Flannery, and John E. Cross, all of Washington, D. C., for appellant.

Mr. Samuel S. Watson, of New York City, for appellees.

[Argument of Counsel from pages 168-175 intentionally omitted] Mr. Chief Justice TAFT delivered the opinion of the Court.

The Baldwin Company filed its bill in the Supreme Court of the District of Columbia against the Commissioner of Patents, seeking to enjoin that officer from canceling two registrations of trade-marks for pianos of which the complainant claims to be the rightful owner. The trade-marks were one for the word 'Howard,' accompanied by the initials 'V. G. P. Co.' arranged in a monogram, dated March 8, 1898, and the other the word 'Howard' printed or impressed in a particular and distinctive manner, dated October 17, 1905. The R. S. Howard Company came into the case as an intervener, and filed an answer denying the right of the complainant to continue to enjoy such registrations, and resisting the injunction to prevent the cancellation. The Commissioner of Patents, as defendant, also filed an answer denying the right of the complainant to the relief sought. The intervener also filed a motion to dismiss the bill for lack of jurisdiction in the court to entertain it. The court denied the motion to dismiss the bill and enjoined cancellation pending the final disposition of the cause. An appeal from this interlocutory order was taken under section 7 of the Act of February 9, 1893, establishing the Court of Appeals for the District of Columbia (27 Stat. 434, c. 74). The Court of Appeals reversed the Supreme Court and remanded the cause, with instructions to dismiss the bill. Appeal to this court was sought and allowed under section 250 of the Judicial Code (Comp. St. § 1227), which provides as follows:

'Any final judgment or decree of the Court of Appeals of the District of Columbia may be re-examined and affirmed, reversed, or modified by the Supreme Court of the United States, upon writ of error or appeal, in the following cases:

'First. In cases in which the jurisdiction of the trial court is in issue; but when any such case is not otherwise reviewable in said Supreme Court, then the question of jurisdiction alone shall be certified to said Supreme Court for decision.

* * *

'Sixth. In cases in which the construction of any law of the United States is drawn in question by the defendant.'

The errors assigned were the holding that the Supreme Court was without jurisdiction to entertain the suit, and the direction to dismiss the bill on that account. In addition to the appeal, the appellee in the Court of Appeals petitioned for a certiorari which is now pending.

As the decree of the Court of Appeals directs the dismissal of the bill for lack of jurisdiction, it is a final decree. Shaffer v. Carter, 252 U. S. 37, 44, 40 Sup. Ct. 221, 64 L. Ed. 445. As the court based its conclusion upon the construction of section 9 of the Trade-Mark Act (33 Stat. 727 [Comp. St. § 9494]), and section 4915, Revised Statutes (Comp. St. § 9460), which was specifically drawn in question by the intervener, and necessarily by the defendant in his answer in denying the complainant's right to relief as claimed by him in his bill under said two sections, we think the appeal was rightfully allowed and that the petition for certiorari should be denied.

The controversy between the parties litigant has had several phases. In August, 1914, R. S. Howard & Co. sought to cancel the registration of the two trade-marks of Baldwin & Co., already referred to, by application to the Commissioner. The Commissioner refused, but upon appeal to the Court of Appeals of the District the decision of the Commissioner was reversed, and this was duly certified to the Commissioner. 48 App. D. C. 437. The Baldwin Company appealed to this court and filed an application for a certiorari as well. The appeal was dismissed and the certiorari denied on the ground that the certificate of the Court of Appeals to the Commissioner was not a final judgment, reviewable here upon appeal or certiorari. 256 U. S. 35, 41 Sup. Ct. 405, 65 L. Ed. 816. This was April 11, 1921, and on May 7, 1921, the Baldwin Company filed the original bill in this case in the Supreme Court of the District against the Commissioner of Patents, seeking an injunction against the canceling of the trade-marks in question. By an amended bill, there was set forth the record in a suit between R. S. Howard & Co. and Baldwin & Co. in New York, resulting in an injunction against the use of the word 'Howard' without prefix or suffix by the R. S. Howard Company in sales of pianos. 233 Fed. 439; 238 Fed. 154, 151 C. C. A. 230.

The main question we have here to consider is whether by the statutes applicable to procedure in settling controversies over the registration of trade-marks in interstate and foreign trade, a remedy by bill in equity to enjoin the Commissioner of Patents from canceling a registered trade-mark is given to the owner of the trade-mark so registered. We are to find the answer in section 9 of the Trade-Mark Act (33 Stat. 727, c. 592) and in section 4915 of the Revised Statutes. Section 9 provides as follows:

'That if an applicant for registration of a trade-mark, or a party to an interference as to a trade-mark, or a party who has filed opposition to the registration of a trade-mark, or 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.'

Section 4915, R. S., provides as follows:

'Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, 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 such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not.'

We have held that the assimilation of the practice in respect of the registration of trade-marks to that in securing patents as enjoined by section 9 of the Trade-Mark Act makes section 4915, R. S., providing for a bill in equity to compel the Commissioner of Patents to issue a patent, applicable to a petition for the registration of a trade-mark when rejected by the Commissioner. American Steel Foundries v. Robertson, Commissioner of Patents, 262 U. S. 209, 43 Sup. Ct. 541, 67 L. Ed. 953; Baldwin Company v. Howard Company, 256 U. S. 35, 39, 41 Sup. Ct. 405, 65 L. Ed. 816; Atkins & Co. v. Moore, 212 U. S. 285, 291, 29 Sup. Ct. 390, 53 L. Ed. 515.

The present case presents this difference. The defeated party in the hearing before the Commissioner is not asking registration of a trade-mark, but is seeking to prevent the cancellation of trade-marks already registered. Section 9...