Diederich v. W. Schneider Wholesale Wine & Liquor Co.

W. H. MUNGER, District Judge. This suit was brought by appellee, as complainant, to enjoin the infringement of a trade-mark. Erom the granting of a temporary order of injunction, Diederich, the defendant, has appealed to this court. It appears that the Schneider Wholesale Wine & Liquor Company has a registered trade-mark, consisting of the arbitrary numbers “905,” applied to whiskies;' that the defendant, who was formerly a stockholder and officer in the Schneider Company, having disposed of his interest thereiñ, engaged in the saloon business by himself, and placed upon the front of his saloon, or saloons, the following signs: “A. Diederich, The Originator of 905.” “Káy-Dee-Diquor Oo. A. Diederich The Originator of 905 Mgr.” . “A. Diederich, 905 The Originator, of” The bill contained an allegation as follows: “That the defendant is engaged in interstate commerce, and has sold and shipped merchandise, sold by him by reason of said deceptive use' of your orator’s trade-mark, to customers residing in the state of Illinois and elsewhere.” This allegation does not allege that the merchandise which he sold to customers residing in the state of Illinois had placed thereon, or upon the wrapper, or in any way connected with such merchandise, the trade-mark “905,” and there is nothing in the proofs to that effect. In what are designated as the “Trade-Mark Cases,” 100 U. S. 82, 25 L. Ed. 550, it was held that Congress only possessed power to grant a trade-mark for use in commerce among the states, foreign nations andi Indian tribes. • , [1] The act of 1905 (33 Stat. 724), first section, is in part as follows : “That the owner of a trade-mark used in commerce with foreign nations, or among the several states, or with Indian tribes, provided such owner shall be domiciled within the territory of the United States, or resides in or is located in any foreign country which, by treaty, convention or law, affords similar privileges to the citizens of the United States, may obtain registration of such trade-mark by complying with the following requirements: First, by filing in the Patent Office an application therefor in writing, addressed to the Commissioner of Patents, signed by the applicant, specifying his name, domicile, location and citizenship, the class of merchandise and the particular description of goods comprised in such class to which the trade-mark is appropriated; a description of the trade-mark itself, and a statement of'the mode in which the same is applied and affixed to goods,” etc. [37] It will be observed that this section contemplates that the trademark is to be affixed to the goods which are used in the commerce specified, as it requires the applicant in his application for a trademark, to give not only a description of the trade-mark itself but “a statement of the mode in which the same is applied and affixed to goods.” Section 16 of the enactment provides: “Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy; or colorable Imitation in commerce among the several states, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof,’" etc. Complainant bases its right to an injunction upon the fact that the signs above mentioned, placed upon the buildings in which he conducted his saloons, were an infringement of its trade-mark. The inquiry then naturally presents itself whether complainant has a trade-mark in a sign placed upon a building, simply indicating that goods of a certain character were sold at that place. In 28 Am. & Eng. Enc. of Law (2d Ed.) p. 352, it is said: “It is essential to the validity of a trade-mark as such that there shall be some actual, physical connection between the goods and the mark, so that the mark goes with the goods into the market. Words, marks, or symbols, used in advertisements, circulars, and other similar ways, but not actually affixed to the goods, are not valid, technical trade-marks. It is sufficient if the mark is affixed either upon the goods themselves or upon the box or wrapper containing them, or in some other way physically attached io the goods. Words not actually affixed to the goods frequently constitute trade-names, and are protected as such against unfair competition.” In Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 142 Ill. 494, 30 N. E. 339, it was said: “A trade-mark owes its existence to the fact that it is actually' affixed to a vendable commodity.” In Oakes v. St. Louis Candy Co., 146 Mo. 391, 48 S. W. 467, it is said: “A trade-mark which is not in some manner attached or affixed or stamped on the article indicated by it involves a contradiction in itself, the idea of some distinctive brand or mark being inherent in the expression itself. An article can only be said to be distinguished by a trade-mark when that mark is connected with, annexed to, or stamped, printed, carved, or engraved upon, the article as it is offered for sale.” In Lawrence Mfg. Co. v. Tenn. Mfg. Co., 138 U. S. 537, 11 Sup. Ct. 396, 34 L. Ed. 997, it was held that a trade-mark, to be valid, must be such as to indicate origin, manufacture or ownership; that, if used to denote simply class, grade, style, or quality of the articles, it could not be upheld as technically a trade-mark. Macmahan Pharmacal Co. v. Denver Chemical Mfg. Co., 113 Fed. 468, 51 C. C. A. 302. [38] And in Ryder v. Holt, 128 U. S. 525, 9 Sup. Ct. 145, 32 L. Ed. 529, it was held that, in a case where the bill did not allege that the trade-mark was used on goods intended to be transported to a foreign country, the federal court had no jurisdiction. We think it clear, from the foregoing authorities, that a trademark is only valid when attached to the article or wrapper, or in some manner physically connected with the article itself. Such being the case, it is very clear that complainant could have no trademark in a sign, placed upon a building, containing the figures “905,” and if complainant had no trade-mark in such a sign upon a building, because the validity of the trade-mark owes its existence to the fact that it is in some manner attached to the article of commerce itself, we are unable to perceive how it can be said that such a sign placed by defendant upon the building in which he transacted his business was an infringement of complainant’s trade-mark. [2] It is a self-evident proposition that what is not and cannot be a trade-mark is not and cannot be infringed as a trade-mark. It is true that the foregoing authorities were decided during the existence of the act of March 3, 1881 (Act March 3, 1881, c. 138, 21 Stat. 502 [U. S. Comp. St. 1901, p. 3401]), but the first section of that act is in substantially the same language as the act of 1905. It requires an applicant to file in the Patent Office “a statement of the mode in which the same is applied and affixed to goods.” Section 16 of the act of 1905, above quoted, is somewhat broader than section 7 of the act of' March 3, 1881, relating to the same matter, in that the act of 1905 renders a person liable who affixes such registered trade-mark, without the consent of the owner, to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise, etc. Stress is placed, in the argument of counsel, upon the meaning of the word “signs.” The word “sign” must be understood to have been used for the purpose of protecting simply what the owner has by virtue of his trade-mark. The word “sign” has various meanings. I find in a copy of the Standard) Dictionary before me that the word, when used as a noun, has the following definitions: “(1) A pantomimic gesture. (2) An inscription or representation to indicate a place of business. •• (3) An arbitrary mark; symbol. (4) A token; emblem.” As complainant acquiréd a right to the trade-mark only as it was affixed in some manner to the article which it sold in commerce among the states, foreign countries, and Indian tribes, it is evident that the term “sign” was used to indicate a mark, symbol, token, or emblem, which was affixed in some manner to the article sold. [3] It is quite probable that complainant states, in its bill, a cause of action against defendant for unfair trade. That question, however, we cannot pass upon. The parties being citizens of the same state, the court below had no jurisdiction to determine that question. Hutchinson, Pierce & Co. v. Loewy, 217 U. S. 457, 30 Sup. Ct. 613, 54 L. Ed. 838. [39] As the alleged act of defendant was no infringement upon complainant’s trade-mark, the order granting an injunction was erroneous, and is consequently reversed.