E C ATKINS & CO. v. MOORE 212 U.S. 285 (1909)

Plaintiffs filed their application for a trademark on June 12, 1905, in which it was recited that--

'The trademark consists of a symbol composed of the letters 'AAA' . . . The trademark is usually displayed on the goods by etching, stamping, or otherwise marking the same upon the blade of the saw, and by inscribing same upon the packages containing such saws.'

This was amended August 30, 1905, by adding the sentence--

'The trademark is shown with the letters arranged in the form of a monogram.' [212 U.S. 285, 286]   The examiner suggested that the description of the trademark should be amended so as to read--

'The trademark consists of a monogram composed of the letters 'AAA."

Plaintiffs declined to comply with the suggestion, and appealed from the ruling of the examiner that such amendment should be made to the Commissioner of Patents, who, on February 20, 1906, overruled the decision of the examiner, and held that the description was sufficient.

April 27, 1906, plaintiffs were notified that their--

'Application for the registration of a trademark for a symbol composed of the letters 'AAA,' for saws of all kinds, filed June 12, 1905, Ser. No. 7998, has been examined and passed for publication, in compliance with 6 of the act authorizing the registration of trademarks, approved February 20, 1905. The mark will be published in the Official Gazette of May 15, 1906.'

The act of February 20, 1905 (33 Stat. at L. 724, chap. 592, 1, U. S. Comp. Stat. Supp. 1907, p. 1008), provided that the applicant should file an application in writing, which should contain, among other things:

'A description of the trademark itself and a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trademark has been used. With this statement shall be filed a drawing of the trademark, signed by the applicant or his attorney, and such number of specimens of the trademark, as actually used, as may be required by the Commissioner of Patents.'

This act was amended by the act of May 4, 1906 (34 Stat. at L. 168, chap. 2081, 1, U.S.Comp. Stat. Supp. 1907, p. 1008), by inserting after the words 'description of the trademark itself,' the words 'only when needed to express colors not shown in the drawing.'

On June 21, 1906, the Patent Office sent plaintiffs the following communication:

'Attention is directed to the act approved May 4, 1906, providing for a description of the trademark itself only when needed to express colors not shown in the drawing. [212 U.S. 285, 287]   'Inasmuch as the trademark covered by this application cannot be registered until after July 1, 1906, when said act takes effect, applicant should direct the cancelation of the present description and of all of the preamble to the statement following the words 'have adopted for my use,' and the substitution therefor of the following words: 'the trademark shown in the accompanying drawing.'

'If colors form a material part of the mark, a brief reference thereto should follow.

'An amendment as above indicated should be promptly filed to avoid delay in the use of the certificate.'

Plaintiffs refused to comply with this suggestion, and, on July 16, 1906, the examiner declined to pass the application for registration.

A petition was thereupon presented by plaintiffs to the Commissioner, seeking the overruling of the action of the examiner, and, on November 22, 1906, the petition was denied.

An appeal was prosecuted to the court of appeals, which affirmed the decision of the Commissioner of Patents, and directed the clerk to 'certify this opinion to the Commissioner of Patents, according to law.'

An appeal and a writ of error were allowed.

Messrs. Chester Bradford, Arthur M. Hood, and E. W. Bradford for appellant and plaintiff in error. [212 U.S. 285, 288]   Assistant Attorney General Fowler for appellee and defendant in error.

Statement by Mr. Chief Justice Fuller: [212 U.S. 285, 289]  

*Mr. Chief Justice Fuller delivered the opinion of the court:

In Frasch v. Moore, 211 U.S. 1 , 53 L. ed. --, 29 Sup. Ct. Rep. 6, it was held that decisions in the court of appeals of the District of Columbia in appeals from the Commissioner of Patents under 9 of the act of February 9, 1893 (chap. 74, 27 Stat. at L. 434, 436, U. S. Comp. Stat. 1901, p. 3391), were interlocutory, and not final, and not reviewable by this court under 8 of that act, because not final judgments or decrees within the meaning of that section. When certified to the Commissioner of Patents, they 'govern the further proceedings in the case' (Revised Statutes, 4914, U. S. Comp. Stat. 1901, p. 3392), but are not final judgments or decrees at law or in equity within the purview of 8.

In Gaines v. Knecht we applied the same rule to a writ of error to the decision of the court of appeals, rendered on appeal to that court from a decision of the Commissioner of Patents in proceedings arising under an application for a trademark, contenting ourselves with this memorandum, announced December 14, 1908 [53 L. ed. --, 29 Sup. Ct. Rep. 688]:

'Writ of error dismissed for want of jurisdiction. Frasch v. Moore, supra; see act of February 20, 1905, for the registration of trademarks, 33 Stat. at. L. 724, chap. 592, 9, 16-18 et passim, U. S. Comp. Stat. Supp. 1907, p. 1008.'

Section 9, there referred to, provides:

'That if an applicant for registration of a trademark . . . 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.' [212 U.S. 285, 290]   Gaines v. Knecht was a case of opposition to the registration of a trademark under 6 and 7 of the act of February 20, 1905, the objections being that the act was unconstitutional, and also that the applicant's mark was so similar to the mark of opponent that it would be likely to lead to confusion, and enable applicant to perpetrate a fraud on the public. The examiner of interferences dismissed the opposition, and from his decision the case was appealed to the Commissioner, who affirmed the decision. An appeal was then taken to the court of appeals, and that court affirmed the Commissioner, and 'ordered that this decision and the proceedings in this court be certified to the Commissioner of Patents, as required by law.' The court said, among other things, that the appeal was 'an appeal from the decision of an officer of the executive department, performing a ministerial act. He has treated the statute as valid, and so he ought to have treated it until it is otherwise determined by the courts . . . . It may be true that the Commissioner acts in a judicial capacity in determining whether the applicant is the owner of the trademark, and whether it is one of those marks the registration of which is prohibited; but, when he has determined these in favor of the applicant, the act to be performed by him is ministerial merely, and that is the act which it is claimed he should have refused to perform, on the ground that the statute is unconstitutional. Such judicial proceedings as there are issue and culminate in a purely ministerial act-the mere registration of a mark- which, if the statute is void, cannot possibly prejudice the right of the opponent or of anyone else. It is not as if the culminating act interfered with the person or property of others. We sit to review the action of the officer from the same standpoint which he was bound to take. Although the case is now before a court, the case itself is not changed, nor are the rules changed by which it should be decided. It is for this court to say merely whether his decision was right or wrong. We think he did not err in treating the act as valid. When some case shall arise in which rights of person or property must be affected by the de- [212 U.S. 285, 291]   cision, it will become necessary to consider the question now attempted to be raised; but to pass upon it now would be to decide a question of theory alone, and this is not the province of a court.' 27 App. D. C. 530.

In the light of the various details of the act of February 20, 1905, and of the specific provisions of 9, we were of opinion that proceedings under the act were governed by the same rules of practice and procedure as in the instance of patents, and the writ of error was accordingly dismissed. The same result must follow in the present case.

Under 4914 of the Revised Statutes no opinion or decision of the court of appeals on appeal from the Commissioner precludes 'any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question;' and by 4915 a remedy by bill in equity is given where a patent is refused; and we regard these provisions as applicable in trademark cases under 9 of the act of February 20, 1905

Appeal and writ of error dismissed.