United States State of South Carolina v. Seymour

• Decision Date: 14 May 1894
• Docket Number: No. 1,140,1,140
• Citation: 14 S.Ct. 871,38 L.Ed. 742,153 U.S. 353
• Parties: UNITED STATES ex rel. STATE OF SOUTH CAROLINA v. SEYMOUR, Commissioner of Patents
• Court: U.S. Supreme Court

153 U.S. 353

14 S.Ct. 871

38 L.Ed. 742

UNITED STATES ex rel. STATE OF SOUTH CAROLINA

v SEYMOUR, Commissioner of Patents.

No. 1,140.

May 14, 1894.

L. H. Campbell, for the motion.

J. Altheus Johnson, opposed.

Mr. Justice GRAY delivered the opinion of the court.

The earliest legislation of congress for the registration and protection of trade-marks was contained in the patent act of 1870, and substantially re-enacted in the Revised Statutes. Act July 8, 1870, c. 230, §§ 77-84 (16 Stat. 210-212; Rev. St. §§ 4937-4947). That legislation, as well as the act of August 14, 1876, c. 274 (19 Stat. 141), for punishing the counterfeiting of trade-marks, was held by this court at October term, 1879, to be unconstitutional and void, because not lim- ited to trade-marks used in commerce with foreign nations, or among the several states, or with the Indian tribes. Trade-Mark Cases, 100 U. S. 82.

Congress afterwards passed an act limited to the registration and protection of trade-marks 'used in commerce with foreign nations or with the Indian tribes,' and whose owners were 'domiciled in the United States, or located in any foreign country or tribes which by treaty, convention or law, affords similar privileges to citizens of the United States.' Act March 3, 1881, c. 138 (21 Stat. 502).

Sections 1 and 2 of that act provide that such owners may obtain registration of such trade-marks by 'causing to be recorded in the patent office a statement specifying name, domicil, location and citizenship of the party applying; the class of merchandise and the particular description of goods comprised in such class to which the particular trade-mark has been appropriated; a description of the trade-mark itself, with facsimiles thereof, and a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trade-mark has been used;' 'paying into the treasury of the United States the sum of twenty-five dollars, and complying with such regulations as may be prescribed by the commissioner of patents;' and 'accompanied by a written declaration verified by the person, or by a member of a firm. or by an officer of a corporation applying, to the effect that such party has at the time a right to the use of the trade-mark sought to be registered, and that no other person, firm or corporation has the right to such use, either in the identical form or in any such near resemblance thereto as might be calculated to deceive; that such trade-mark is used in commerce with foreign nations or Indian tribes, as above indicated; and that the description and facsimiles presented for registry truly represent the trade-mark sought to be registered.'

By section 3, 'no alleged trade-mark shall be registered, unless the same appear to be lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes, as above mentioned, or is within the provision of a treaty convention or declaration with a foreign power; nor which is merely the name of the applicant; nor which is identical with a registered or known trade-mark of another and appropriate to the same class of merchandise, or which so nearly resembles some other person's lawful trade-mark as to be likely to cause confusion or mistake in the public or to deceive purchasers.'

This section further provides that 'in an application for registration the commissioner of patents shall decide the presumptive lawfulness of claim to the alleged trade-mark; and in any dispute between an applicant and a previous registrant, or between applicants, he shall follow, so far as the same may be applicable, the practice of courts of equity of the United States in analogous cases.'

The act provides for no direct judicial review, by appeal or otherwise, of the decision of the commissioner of patents upon the question of registration. But section 7 provides that 'registration of a trade-mark shall be prima facie evidence of ownership;' that any person reproducing, counterfeiting, copying or colorably imitating and affixing to similar goods, a registered trade-mark shall be liable to an action at law for damages, or a suit in equity for an injunction; and that the courts of the United States shall have original and appellate jurisdiction in such cases, without regard to the amount in controversy.

On December 24, 1892, the general assembly of South Carolina passed an act prohibiting the manufacture or sale of intoxicating liquors within the state, except as therein provided; directing the appointment of a commissioner who should, under the rules and regulations of a state board of control, consisting of the governor, the comptroller general and the attorney general, 'purchase all intoxicating liquors for lawful sale in this state,' and sell to county dispensers no liquors unless 'tested by the chemist of the South Carolina college and declared to be pure and unadulterated;' that county dispensers should 'alone be authorized to sell and dispense intoxicating liquors;' that manufacturers of intoxicating liquors doing business in the state should 'be allowed to sell to no person in this state, except to the state commissioners and to parties outside of the state;' and that every package of intoxicating liquors sold in the state, or shipped beyond the limits of the state, should have thereon a certificate of the commissioner. Acts S. C. 1892, c. 28, pp. 62, 63, 65.

On July 15, 1893, the state of South Carolina, by its governor, paid into the treasury of the United States the sum of $25, and filed with the commissioner of patents, in conformity with the provisions of the act of congress of 1881, and with the regulations prescribed by the commissioner of patents, a statement and declaration, which began by stating that 'the state of South Carolina, one of the commonwealths composing the United States of America, possessed in this regard of the full rights of a corporation, and doing business at its capital city of Columbia, in the county of Richland, state aforesaid, has adopted for its use a trade-mark for chemically pure distilled liquors,' consisting of the word 'Palmetto,' and particularly described; was accompanied by fac similes of the trade-mark; and was supported by a declaration on oath of the governor that he verily believed 'that the foregoing statement is true; that the said state at this time has a right to the use of the trade-mark therein described; that no other person or firm or corporation has the right to such use, either in the identical form, or in any such near resemblance thereto as might be calculated to deceive; that the said trade-mark is used by the said state in commerce with foreign nations or Indian tribes, and particularly with Canada; and that the description and fac similes presented for record truly represent the trade-mark sought to be registered.'

At the bearing before the commissioner of patents, it appeared that the trade-mark had been adopted by the state board of control, and that the state had sold in Canada a case of liquors with this trade-mark.

The commissioner of patents refused registration of the trade-mark, upon the ground that the state of South Carolina, by its own laws, had no authorized trade in distilled liquors outside of its own limits, was not the owner of any trade-mark, and had not the right to the use...