Kasch v. Cliett

SIBEEY, District Judge (after stating the facts as above). The amended pleadings asserted two commingled causes of action, one for unfair competition in business, and one for unlawful -use in interstate commerce of a trade-mark registered under the acts of Congress. The former arises under no law of the United States, and jurisdiction to consider it in a federal court can rest only on diversity of citizenship, which is lacking in this case. The latter arises under the trademark acts of Congress, and the federal courts'are specially given jurisdiction, irrespective of citizenship or amount involved. Judicial Code, §> 24 (7), being Comp. St. § 991; Act of February 20, 1905, '§ 17 (Comp. St. § 9502). Section 19 of the act (Comp. St. § 9504) authorizes injunctions “according to the course and principles of equity.” The pleadings here as amended make on their face a case of federal cognizance, and ■ the court had initial jurisdiction. But section 16 of the act (Comp. St. § 9501) states the essentials of such a case, in addition to the existence of a valid registered trade-mark, thus: “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, arid 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,” etc. [171] By the express words of the section, use of the infringing mark in the commerce over which Congress has control is made as vital to the action as the existence of the registered trade-mark or its infringement. Passing by the questions as to the validity of complainants5 trade-mark, and whether defendant’s mark infringed it, and whether complainants have consented thereto, .the case for an injunction under the federal act fails for want of proof of an actual or immediately threatened use in interstate commerce. The only actual sales proven to have been made by defendant in interstate commerce were prior to the registration of the mark, and the circulation of the advertising matter in states other than Texas, which is relied on as a threat of such sales, occurred immediately after the registration, and more than a year before filing the bill. The sworn answer and its amendment explicitly deny any present or intended use of the mark complained to be an infringement in interstate or foreign commerce. There was a failure to show a case within the competency of the court, such as was alleged, which may without impropriety be called a failure of jurisdiction. The court was warranted in refusing a preliminary injunction for that reason. Under the 'less explicit language of the Trade-Mark Act of 1881, it was held essential to jurisdiction that it be alleged that, defendant’s use of the infringing mark was in the commerce dealt with by that act. Ryder v. Holt, 128 U. S. 525, 9 Sup. Ct. 145, 32 L. Ed. 529. And like proof was required in Warner v. Searl & Hereth Co., 191 U. S. 195, 24 Sup. Ct. 79, 48 L. Ed. 145. The act of 1905 was adopted just after the latter decision, and its express language, as we have seen, makes the same requirement. If the Congress might in the regulation of interstate commerce protect that of the complainants under their trade-mark, by forbidding as an obstruction infringement in intrastate commerce^ it is enough to say that it has not undertaken to do so.. A jurisdiction assumed because of a substantial federal question may require the decision of other questions which control the controversy, regardless of what decision is given the federal question, or whether it is decided at all. Siler v. L. & N. R. Co., 213 U. S. 175, 29 Sup. Ct. 451, 53 L. Ed. 753; Greene v. Louisville & Interurban R. R., 244 U. S. 499, 37 Sup. Ct. 673, 61 L. Ed. 1280, Ann. Cas. 1917E, 88. But where, as in this case, the entire jurisdiction is limited to the one subject-matter of a case arising under section 16 of the Act of 1905. and that case fails, it would on its face be an unwarranted extension of jurisdiction to attempt to deal with an entirely different cause of action arising under the common law or state laws, such as for unfair competition or infringement of a trade-mark within a single state. Such was the conclusion recognized on a review of the cases dealing with this very subject-matter in Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 456, 31 Sup. Ct. 456, 55 L. Ed. 536, and applied as we now apply it in Leschen Rope Co. v. Broderick, 201 U. S. 167, 26 Sup. Ct. 425, 50 L. Ed. 710, and Elgin Watch Co. v. Illinois Watch Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed, 365, affirming 94 Fed. 667, 35 C. C. A. 237. The judgment is affirmed.