CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SECND CIRCUIT
White, McKenna, Holmes, Day, Hughes, Van Devanter, Lamar, Pitney; Lurton took no part in the decision of this case
MR. JUSTICE HUGHES delivered the opinion of the court.
Thaddeus Davids Company, manufacturer of inks, etc., brought this suit for the infringement of its registered trade-mark "DAVIDS'". It was alleged that the complainant was the owner of the trade-mark; that it had been used in interstate commerce by the complainant and its predecessors in business for upwards of eighty years; that on January 22, 1907, it had been registered by the complainant
as a trade-mark, applicable to inks and stamp pads, under the act of February 20, 1905, c. 592, 33 Stat. 724; that the complainant was entitled to such registration under § 5 of the act by reason of actual and exclusive use for more than ten years prior to the passage of the act; and that the defendants, Cortlandt I. Davids and Walter I. Davids, trading as Davids Manufacturing Company, were putting inks upon the market with infringing labels. The bill also charged unfair competition. Upon demurrer, the validity of the trade-mark was upheld by the Circuit Court of Appeals (178 Fed. Rep. 801), and on final hearing, upon pleadings and proofs, complainant had a decree. 190 Fed. Rep. 285. This decree was reversed by the Circuit Court of Appeals which held that there was no infringement of the registered trade-mark and that the suit, if regarded as one for unfair competition, was not within the jurisdiction of the court, the parties being citizens of the same State. 192 Fed. Rep. 915. Certiorari was granted.
As the mark consisted of an ordinary surname, it was not the subject of exclusive appropriation as a common law trade-mark (Brown Chemical Company v. Meyer, 139 U.S. 540, 542; Howe Scale Company v. Wyckoff, 198 U.S. 118, 134, 135); and the complainant derived its right from the fourth proviso of § 5. This section, at the time of the registration, was as follows (33 Stat. p. 725):*fn1
"Sec. 5. That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark unless such mark --
"(a) Consists of or comprises immoral or scandalous matter;
"(b) Consists of or comprises the flag or coat of arms or
other insignia of the United States, or any simulation thereof, or of any State or municipality, or of any foreign nation: Provided, That trade-marks which are identical with a registeredor known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, shall not be registered: Provided, That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term, shall be registered under the terms of this Act: Provided further, That no portrait of a living individual may be registered as a trade-mark, except by the consent of such individual, evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations or among the several States, or with Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this Act."
The fourth proviso, or ten-year clause, has manifest reference to marks which are not technical trade-marks; otherwise, it would have no effect. The owner of a trade-mark valid at common law and used in commerce with foreign nations, or among the several States, ...