Van Alstyne & Co. v. Boutwell Milling & Grain Co.

Mr. Chief Justice Shepard delivered the opinion of the Court: This is an appeal from a decision of the Commissioner of Patents canceling the registration of a trademark, “Upper Hudson,” for rye flour, registered by Van Alstyne & Company, January 14, 1913. This registration was made under the ten-year clause of the trademark act. The Boutwell Milling & Grain Company had previously registered the mark on January 9, 1906. Van Alstyne & Company -were flour dealers in New York city, members of the produce exchange, and seem to have originated the mark “Upper Hudson.” This flour was manufactured by O. Boutwell & Son at Troy, and the trademark “Upper Hudson” with the name of Van Alstyne & Company was applied to the barrels after receipt in New York. After some years Van Alstyne & Company sent the stencil marked “Upper Hudson” to O. Boutwell & Son to put the mark on the barrels and also their own name in place of Van Alstyne & Company. They sold flour so marked to a number of eastern dealers for a number of years continuing down to the present time. By contract Yan Alstyne & Company handled the flour in [532] New York city and vicinity, but finally an agreement was made'with them to purchase the flour outright. This contract was not fully complied with by Van Alstyne & Company, and in 1905 the Boutwell Milling & Grain Company, successors to O. Boutwell & Son, began to ship flour with this mark to other dealers in New York city. This was known to Van Alstyne & Company, and in 1906, the Boutwell Milling & Grain Company registered the mark in their own name. Van Alstyne & Company were informed of this, and reported an infringement by a New York dealer, and the Boutwell Milling & Grain Company had the latter ended by negotiation with the infringer. Thus it appears that the trademark was used by the Boutwell Milling & Grain Company for a number of years as their own with the knowledge of Van Alstyne & Company. The Examiner of Interferences granted the decree of cancelation on the ground that the mark had been abandoned by Van Alstyne & Company, and the use of it by the Boutwell Milling & Grain Company acquiesced in. The Commissioner affirmed this decision without passing upon the question of abandonment or acquiescence, but affirmed it on the ground that there had not been exclusive use by Van Alstyne & Company for the ten years prior to registration made necessary by the trademark act. Passing by the question of first use of the mark on account of its nontechnical character, and also the question of abandonment and acquiescence, we agree with the Commissioner that Van Alstyne & Company had not the exclusive use of the trademark for the ten years prior to the registration made necessary by the act. See Duluth Superior Mill. Co. v. Koper, 37 App. D. C. 115. The decision is right and is affirmed. This decision will be certified by the Clerk to the Commissioner of Patents as required by law. The papers embraced in the return to the writ of certiorari being unnecessary to the decision of the cause, the costs of the writ and the printing thereof are ordered taxed against the appellee. Affirmed.