U S EX REL BALDWIN, CO. v. ROBERTSON 265 U.S. 168 (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.[ U S ex rel Baldwin, Co v. Robertson 265 U.S. 168 (1924) ]

[265 U.S. 168, 175]  

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 [265 U.S. 168, 176]   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. [265 U.S. 168, 177]   Shaffer v. Carter, 252 U.S. 37, 44 , 40 S. Sup. Ct. 221. 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. 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 [265 U.S. 168, 178]   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 [265 U.S. 168, 179]   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; Baldwin Company v. Howard Company, 256 U.S. 35, 39 , 41 S. Sup. Ct. 405; Atkins & Co. v. Moore, 212 U.S. 285, 291 , 29 S. Sup. Ct. 390.

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 provides for appeals to the District Court of Appeals, not only for a defeated applicant for registration of a trade- mark, but also for a dissatisfied party to an interference as to a trade- mark, a dissatisfied party who has filed opposition to the registration of a trade-mark and a dissatisfied party to an application for the cancellation of the registration of a trade-mark. It seems clear that the complainant below was a dissatisfied party to an application for the cancellation of the registration of a trade-mark. We think that both the applicant for cancellation and the registrant opposing it are given the right of appeal to the District Court of Appeals under that section.

The next inquiry is whether in addition to such appeal and after it proves futile, the applicant is given a remedy by bill in equity as provided for a defeated applicant for a patent in section 4915, R. S. We have in the cases cited given the closing words of section 9 a liberal construction in the view that Congress intended by them to give every [265 U.S. 168, 180]   remedy in respect to trade-marks that is afforded in proceedings as to patents, and have held that under them a bill of equity is afforded to a defeated applicant for trade-mark registration just as to a defeated applicant for a patent. It is not an undue expansion of that construction to hold that the final words were intended to furnish a remedy in equity against the Commissioner in every case in which by section 9 an appeal first lies to the Court of Appeals. This necessarily would give to one defeated by the Commissioner as a party to an application for the cancellation of the registration of a trade-mark, after an unsuccessful appeal to the advisory supervision of the Court of Appeals, a right to resort to an independent bill in equity against the Commissioner to prevent cancellation.

It is pointed out as militating against our interpretation of section 9 and an assimilation of trade-mark procedure to that in the case of patents that after a patent issues, there is no proceeding provided by which a patent can be cancelled, except on suit of the United States. Mowry v. Whithey, 14 Wall. 434, 439; United States v. Bell Tel. Co., 128 U.S. 315, 368 , 370 S., 9 Sup. Ct. 90; United States v. Am. Bell Tel. Co., 159 U.S. 548, 555 , 16 S. Sup. Ct. 69. Briggs v. United Shoe Machinery Co., 239 U.S. 48, 50 , 36 S. Sup. Ct. 6. That is true, but a registration of a trade-mark may be canceled, and the purpose of Congress by section 9 of the Trade-Mark Act was to give to defeated applicants in the Court of Appeals the same resort to a court of equity as was given to defeated applicants for patents so far as the same was applicable. The applicants in section 9 were of four kinds and to each of them were intended to be accorded the same resort to the Court of Appeals and the same remedy in equity as to the applicant for a patent in section 4915. The inherent differences between trade-marks and patents should not prevent our giving effect to the remedial purpose of Congress in carrying out the analogies between the two classes of privileges to secure a common procedure. [265 U.S. 168, 181]   The argument is made that section 9 should not be held to authorize the use of a suit in equity for all of the four cases in which appeals are provided to the Court of Appeals from the Commissioner and are unsuccessful, because by section 22 of the same act (Comp. St. 9507) there is a special provision for a remedy in equity where there are interfering registered trade-marks. It is said this excludes the inforence that such a remedy is also provided in section 9, on the principle 'expressio unius exclusio alterius.' An examination of section 22 shows that it refers to an independent suit between claimants of trade-marks, both of which have already been registered. The Commissioner is not a party to such litigation, but is subject to the decree of the court after it is entered. It is just like the proceeding in section 4918 (Comp. St. 9463) to settle controversies between interfering patents already granted by the Patent Office. Section 9 of the Trade-Mark Act is wider than section 22 in its scope. It includes one who applies for registration of an unregistered trade-mark which interferes with one already registered.

On the whole, we think that our decision in American Steel Foundries Co. v. Robertson, 262 U.S. 209 , 43 Sup. Ct. 541, leads us necessarily to sustain the jurisdiction of the Supreme Court of the District to entertain this bill.

Finally it is objected that this bill was not in time. It was filed more than two years and two months after the decision of the Court of Appeals in the first appeal from the Commissioner of Patents. It is contended that under Gandy v. Marble, 122 U.S. 432 , 7 Sup. Ct. 1290, section 4894, R. S., applies to any bill in equity under section 4915, and compels the dismissal of the bill if it is not prosecuted within one year after the adverse decision in the Court of Appeals, unless it appears to the satisfaction of the court that the delay was unavoidable. In re Hien, 166 U.S. 432, 438 , 17 S. Sup. Ct. 624; American Steel Foundries v. Robertson, 262 U.S. 209, 212 , 213 S., 43 Sup. Ct. 541. There was here, however, justification for the delay in the appeal taken to this court which was dismissed. 256 [265 U.S. 168, 182]   U. S. 35, 41 Sup. Ct. 405. That decree was entered April 11, 1921, and this bill was filed within 30 days thereafter. we think there was no laches or abandonment.

The decree of the Court of Appeals is reversed, and the cause is remanded to the Supreme Court of the District for further proceedings.

Mr. Justice McREYNOLDS dissents.