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rectness of this ruling, this court would be without jurisdiction to entertain it. The circuit court of appeals has no jurisdiction in any case in which the constitutionality of any law of the United States or the validity or construction of any treaty is drawn in question. In such cases an appeal or writ of error lies directly to the supreme court, and the circuit court of appeals can only exercise appellate jurisdiction in cases other than those. Authority, however, is given the circuit court of appeals in every "subject within its appellate jurisdiction" to certify to the supreme court any question of law concerning which it desires the instruction of that court "for its proper decision." Act March 3, 1891, § 6. The supreme court in several cases has held that, although a case which has been brought to the circuit court of appeals by an appeal or writ of error may involve a question which that court has no jurisdiction to entertain, it may nevertheless, if the case also involves other questions, determine those questions, and certify to the supreme court the question which it may not entertain. U. S. v. Jahn, 155 U. S. 109, 15 Sup. Ct. 39, 39 L. Ed. 87; Carter v. Roberts, 177 U. S. 496, 20 Sup. Ct. 713, 44 L. Ed. 861. In the latter case the court used this language:
"When cases arise which are controlled by the construction or applicatin of the constitution of the United States a direct appeal lies to this court, and, if such cases are carried to the circuit court of appeals, those courts may decline to take jurisdiction, or, where such construction or application are involved with other questions, may certify the constitutional question, and afterwards proceed to judgment, or may decide the whole case in the first instance."
This language is relied upon by counsel for the appellant as meaning that the circuit court of appeals may in deciding the whole case decide the constitutional question, or, as in this case, a question involving the construction of a treaty. We do not regard it as intended to bear that meaning, and, as we read the language, it means simply that the circuit court of appeals may decide the whole case by affirming or reversing the decision under review without passing upon the constitutional or treaty question, or, if it sees fit, may reserve judgment and certify that question.
Passing to the questions which this court has power to determine, they may be summarily disposed of. The only assignments of error other than those respecting the construction of the treaty are that the court erred in discharging the defendant, that it erred in not ordering him back into the custody of the marshal, and that it erred in not dismissing the writ. The assignments do not comply with the rule, as they do not set out particularly the error intended to be urged. The court is at liberty, however, to notice a "plain error not assigned." The more important of the errors which have been urged allege defects of form in the petition which might have been cured by an amendment if they had been taken in the court below. They do not appear to have been taken there, and cannot be raised for the first time upon appeal.
There certainly is no "plain error" in the case to justify a consideration of questions not presented by the assignments. Except for the importance of the decision of the court below in its bearing upon other cases which may arise under the Chinese exclusion laws,
we should consider it to be our duty to affirm the order of the court below, without certifying any question for instructions to the supreme court; but it is so desirable in the public interests that the error of construction, if there was one, be corrected promptly, that we have concluded to reserve judgment, and certify the question for
(113 Fed. 468.)
MACMAHAN PHARMACAL CO. v. DENVER CHEMICAL MFG. CO. (Circuit Court of Appeals, Eighth Circuit. December 16, 1901.)
1. TRADE MARKS-COMMON-LAW RIGHT-How ACQUIRED.
The common-law right to the exclusive use of a word, symbol, or device as a trade-mark is not given merely by its adoption as such, but it must also have been used for such a length of time, and under such circumstances, as to identify the goods in connection with which it is used to the trade as those of a particular manufacturer or dealer as distinguished from those of other manufacturers or dealers.
2. SAME-NECESSITY OF PUBLIC USE.
A pharmacist in New York City for 20 years made and sold a liquid preparation for use by dentists under the name of "Macmahan's Coucentrated (or saturated) Tincture, Aconite, with Iodine." After that time he was succeeded by a corp ration which continued to make and sell the preparation, adding to the above designation on the labels the word "Antiphlogistine." On cards and circulars it was described by the name "Macmahan's Antiphlogistine," but such cards or circulars were not shown to have been distributed to any extent, and the preparation was not advertised in any other manner. In 10 years the company made but 362 sales, to 98 different customers, alm st exclusively dentists, who purchased for their own use. The article was not known in the market generally, nor even to pharmacists in the city. Held, that such company did not have an exclusive right to the use of the word "Antiphlogistine" as a trade-mark, and especially as against another company which had adopted it, without knowledge of such use as a trademark, to designate a plastic preparation not adapted to the use of dentists, but intended for external application, and which, during a num ber of years, it had advertised extensively, and in which it had built up an extensive trade.
3. SAME-TRANSFERABILITY-DISASSOCIATION FROM ARTICLE.
A trade-mark is not by itself such property as can be transferred, and the right to use it cannot be assigned except as incidental to the transfer of the business or property in cnnection with which it has been used. A transfer of the right to use it in connection with a different article, or one of a different manufacture, would result in deceiving the public as to the article or its origin, which it is the sole legitimate purpose of a trade-mark to prevent, and a transferee will not be protected in such use by a court of equity.
Appeal from the Circuit Court of the United States for the District of Colorado.
In the year 1867 one Thomas J. Macmahan, a druggist of New York City, prepared a liquid mixture of tinctures of aconite and iodine for the use of dentists, and labeled it thus:
Sat. Tinct. Aconite Root,
Prepared Expressly for Dentists' Use by
T. J. Macmahan.
138 Sixth Av., bet. 10th & 11th Sts.,
Macmahan's general drug business consisted of the manufacture and sale of dental preparations, like tooth powder and mouth wash. He carried on that part of the business, consisting of putting up and selling the above-mentioned mixture, in a very small way under the name "saturated" or "concentrated tincture of aconite and iodine," until the year 1890, when he sold and transferred his entire business to the appellant, the Macmahan Pharmacal Company, a corporation then organized in New York by him to take over and conduct the same. He at once became, and has ever since continued to be, the vice president, treasurer, and general manager of the corporation. Between December 27, 1889, and October 8, 1900, when a new set of books was opened by the corporation, his private sales bock shows that eight sales of the mixture in question were made by him and noted on his sales book as "Antiphlogistine," which word he claims to have adopted some time in 1889 as his trade-mark. The corp ration soon made a change in the label for the mixture, and thereafter employed the following:
Concentrated Tinct. Aconite,
Prepared Expressly for Dentist's Use by
MACMAHAN PHARMACAL CO.,
No. 172 Sixth Ave., New York."
This mixture was put up in one-ounce bottles, on which was pasted the label. The business done by the corporation between 1890, when first organized, and April, 1900, when Macmahan's testimony was taken, in selling the mixture was as follows: Total number of sales, 362; gross amount of sales, $514.18; total number of customers, 98. The sales vere made almost exclusively to dentists and dental supply houses in New York City. In a very few instances they were made on the prescription of general practitioners for other purposes. No advertisement of the mixture in question appears ever to have been made in newspapers or journals of the day by the Macmahan Company. The record shows that it had a business card as follows:
The Macmahan Pharmacal Co.,
SOLE PROPRIETORS OF
HANDICAP TOOTH POWDER.
EAU FAVORITE, A LIQUID DENTIFRICE.
142 Sixth Avenue,
-and also that it prepared at different times between 1890 and 1900 two circulars which were employed by it as the interior wrapper of the bottles. These circulars gave the origin and history of the mixture and some of the uses to which it might be put, and each had a heading, in large letters, thus: "Macmahan's Antiphlogistine." There is some proof also to the effect that the company had letterheads, billheads, and envelopes substantially like the business card, but when they were first employed, or how long, or how extensively, they were used, does not appear. Accordingly, It is safe to say that the only substantial evidence of knowledge on the part of the public of the use of the word "Antiphlogistine" by the Macmahan Company is such as has been conveyed to it by the label last referred to, pasted on the bottle itself, and on its outside wrapper, and such as may have been discovered from an inspection of the circular constituting the
inside wrapper of the bottle, in connection with the fact that 93 different persons, during the 10 years following the incorporation of the company, purchased some quantity of the mixture, presumably wrapped in the circular. The evidence in relation to the card, letterheads, billheads, and envelopes is so unsatisfactory, as to the time when they were used, that they are of no substantial value as evidence of knowledge on the part of the public of their contents. On the other hand, the evidence of two experienced pharmacists of New York, who were produced by the Macmahan Company as witnesses in its behalf, tends to show that its mixture was not known among the pharmacists of New York by the name of "Antiphlogistine," or by any other name, and that the preparation known there by that name was one made by the Denver Chemical Manufacturing Company, the appellee. This last-named company was organized as a corporation in 1893, and immediately engaged in business at the city of Denver, Colo. It appears from the record that between the years 1890 and 1893 one Dr. Sheets, a physician of Denver, compounded a certain medicinal preparation, consisting of a soft, plastic, antiseptic dressing, intended for external use only. Without any knowledge that the word "Antiphlogistine" had ever been employed by Macmahan, or any other person, as a trade-mark for the sale of liquid dentifrice, or any other article of merchandise, Sheets adopted the word as his trade-mark, and forthwith used it in connection with the sale of his preparation. The Denver company was incorporated for the purpose of acquiring the right to manufacture and sell the preparation of Dr. Sheets, as he had done. It afterwards acquired the same, and has since then carried on the business of manufacturing and selling that preparation solely. From the beginning, the Denver company advertised it extensively and at great expense, throughout the United States, Canada, and England, as "Antiphlogistine." The sales rapidly increased from year to year from 1894, when it sold 3,521 pounds, until 1900, when it sold 138,950 pounds. In April, 1895, the defendant company took the requisite steps, pursuant to the requirement of the act of March 3, 1881 (21 Stat. 502), to secure, and did secure, registration of its trade-mark. In October, 1896, this company for the first time received information by letter from the Macmahan Company that it claimed the exclusive right to the use of the word "Antiphlogistine" as its trade-mark. Dr. John Campbell was at that time one of the largest stockholders, a director, and for nearly five years had been president, of the Denver Company. In 1896 he was in New York engaged in prosecuting its business there. The communication from the Macmahan Company was referred to him for inquiry. He made an investigation, and reported to his company that Macmahan's preparation was a liquid, and not at all like the plastic compound of his company, that it was used exclusively by dentists, and known to but very few, and that there was no conflict between the two preparations. Nothing further was heard from the Macmahan Company until October, 1897, when Macmahan again wrote, notifying the Denver Company of his claim. Some e rrespondence ensued between counsel of the parties, but it ended in February, 1898. Soon after that, some disagreement arose between Dr. Campbell and the officers of his company, which resulted in his severing his connection with the company, resigning as an officer and selling out his stock. In April, 1899, Dr. Campbell entered into a written contract with the Macmahan Company, reciting that that company had been "engaged in making and selling a medicinal preparation intended for external application in liquid form" under the name "Antiphlogistine," and that Dr. Campbell had "devised, and is about to manufacture and sell, a medicinal preparation, not in liquid form, for external use, which he desires to make and sell under the said name 'Antiphlogistine,' and concluding with an agreement conferring upon Campbell the right to use the word "Antiphlogistine" to designate his preparation, with a covenant on the part of the Macmahan Company not to sue Campbell for such use, but obligating Campbell to pay 5 per cent. of his gross sales to the Macmahan Company as a license fee for the privilege of using the word. This agreement also contained a pr vision as follows: "Fifth. Upon being requested so to do, and upon being duly indemnified for all expenses, costs, and charges which it may incur. the party of the first part [the Macmahan Company], its successors or assigns, shall bring such suits,
actions at law, or take such other proceedings as the party of the second part Campbell] or his assigns shall desire, to prevent the use of said word 'Antiphlogistine' by any other person or persons, in or about the sale of any medicinal preparation." Shortly afterwards Campbell requested the Macmahan Company to institute this suit, and it was accordingly done, in the name of the Macmahan Company as complainant, but at the expense and for the benefit of Dr. Campbell, pursuant to the aforesaid agreement. The general object and purpose of the suit was to enjoin the Denver Company, defendant below, from using the word "Antiphlogistine" in connection with the sale of its compound, on the ground that the Macmahan Company had the exclusive right thereto as a trade-mark. In due course of time it was brought on for a hearing on the facts, as hereinbefore substantially narrated, and resulted in a decree dismissing the bill. The substantial error assigned is that the circuit court erred in refusing to enjoin the defendant as prayed, for the reason, as is claimed, that the c mplainant had acquired the exclusive use of the word "Antiphlogistine" as a trademark for its mixture.
Lysander Hill, for appellant.
Edmund Wetmore (William G. Edwards, on the brief), for appellee. Before SANBORN and THAYER, Circuit Judges, and ADAMS, District Judge.
ADAMS, District Judge, after stating the case as above, delivered the opinion of the court.
This is an action to restrain the alleged infringement of a specific trade-mark. No claim is made that defendant's goods are so put upon the market as to induce or tend to induce purchasers to buy them as and for the goods of complainant. In fact the packages containing them are so dissimilar in character, size, dressing, and display from the complainant's packages that it is impossible that any person could be deceived with respect to them, or that defendant could palm off its goods as and for those of complainant ; and no claim is made that defendant adopted the word "Antiphlogistine" as its trade-mark with any knowledge that complainant or its predecessor had ever either adopted or used the same for any purpose whatsoever. No question, therefore, of fraudulent purpose or intent on the part of the defendant to circumvent the complainant or deceive the public is raised by this record.
Defendant concedes that it has made use of the word as its trademark continuously and extensively from and after 1893 to the present time, and claims that it has a legal right to continue so doing. It contends that complainant never acquired the exclusive right to the use of the word at all, and if it did that it was limited to use upon that particular class of merchandise known as "liquid dentiírice," with which alone it was associated.
The right to a trade-mark at common law, independent of the registration statute, is not created by invention or priority of adoption alone. A word, symbol, or device, to be a valid trade-mark constituting a right of property, must have been used by the owner in connection with the sale of his goods for such length of time, and under such circumstances, as indicates to the trade that the goods in connection with which it appears are his goods, as dis-. tinguished from those of other manufacturers or dealers. The mere adoption of such word, symbol, or device, unaccompanied by such