HUTCHINSON, PIERCE & CO v. LOEWY

Mr. Archibald Cox for appellant.

[217 U.S. 457, 459]   Messrs. L. L. Morrill and E. T. Fenwick for appellee.

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

This was a bill in equity for an injunction and accounting, the complainant alleging the defendant had infringed its technical trademark applied to shirts, and also was guilty of unfair competition. As complainant is a corporation of the state of New York and defendant is a citizen of the same state, the court's jurisdiction extends only to the use of the registered trademark in commerce between the states, with foreign nations, and the Indian tribes.

There was no attempt to prove that defendant had passed off, or intended to pass off, his goods for complainant's, or had made profits, or that complainant had sustained damage. The cause proceeded solely on complainant's ownership of its technical trademark.

The circuit court held that defendant's trademark or brand was clearly distinguishable from that of complainant, and said:

'There is no reasonable probability of the ordinary purchaser being deceived into buying the defendant's manufacture as that of complainant. The rule is well established that a trademark, word, or symbol has the elements of a property right, and may not be unlawfully used by a rival in business, either alone or as an accessory to such prior appropriation; and in such cases a right to injunctive relief follows without proof of confusion of proprietorship, or that buyers have been actually misled by such use. But if a defendant's design or symbol is essentially different and distinguishable in appearance, so [217 U.S. 457, 460]   that by no possibility can his article be taken for complainant's genuine production, a cause of unlawful appropriation is not maintainable.' 90 C. C. A. 3, note; 163 Fed. 44, note.

The bill was thereupon dismissed, and having been taken by appeal to the United States circuit court of appeals for the second circuit, the decree below was affirmed. 90 C. C. A. 1, 163 Fed. 42.

Appellants thereupon petitioned for an appeal to this court, which was allowed.

Sections 17 and 18 of the act of Congress approved February 20, 1905, in respect to trademarks, reads as follows:

'Section 17. That the circuit and territorial courts of the United States and the supreme court of the District of Columbia shall have original jurisdiction, and the circuit courts of appeal of the United States and the court of appeals of the District of Columbia shall have appellate jurisdiction, of all suits at law or in equity respecting trademarks registered in accordance with the provisions of this act, arising under the present act, without regard to the amount in controversy.

'Section 18. That writs of certiorari may be granted by the Supreme Court of the United States for the review of cases arising under this act in the same manner as provided for patent cases by the act creating the circuit court of appeals.' [33 Stat. at L. 728, chap. 592, U. S. Comp. Stat. Supp. 1909, p. 1283.]

We are of opinion that this appeal will not lie, and that the remedy by certiorari is exclusive. By the 6th section of the judiciary act of March 3, 1891, the final decisions of the circuit courts of appeal are made final 'in all cases arising under the patent laws, under the revenue laws, and under the criminal laws and in admiralty cases,' with power in this court to require any such cases to be certified thereto for its review and determination, 'with the same power and authority in the case as if it had been carried by appeal or writ of error to the Supreme Court.' [26 Stat. at L. 828, chap. 517, U. S. Comp. Stat. 1901, p. 549.]

We think that the language of 18 places suits brought under the trademark act plainly within the scope of the act [217 U.S. 457, 461]   establishing the court of appeals, and that a final decision of that court can be reviewed in this court only upon certiorari, and that therefore the pending appeal must be dismissed. And this conclusion is sustained by Atkins v. Moore, 212 U.S. 285, 291 , 53 S. L. ed. 515, 517 29 Sup. Ct. Rep. 390.

Appeal dismissed.