RAHTJEN'S AMERICAN COMPOSITION | Fed. 257. (See S. C. Reporter's ed. 1-18.) Trademarks use of word "patent"-right word. 3. The name "Rahtjen's Composition" for paint first prepared by Rahtjen, and which was for years covered by a patent, becomes common property after the expiration of the patent, where that name has always been given to the article and is the only name by which it La possible to describe it. [No. 54.] Statement by Mr. Justice Peckham: Argued April 25, 26, 1901. Decided Octo- and from using the name upon its packages ber 21, 1901. Ο or in its advertisements. 41 C. C. A. 329, Judge Wallace dissented from the judg ment and opinion of the circuit court of ap peals, holding that the case was properly decided in the court below, and that the de cree ought to be affirmed. NOTE. On the effect of deception in a trade- | transfer of; use of; infringement-see notes to mark to defeat right of action for its infringement-see notes to Raymond v. Royal Baking Powder Co. 29 C. C. A. 250, and Joseph V. Macowsky (Cal.) 19 L. R. A. 53. As to trademarks: right to what may be; 183 U. S. U. S., Book 46. Dr. S. A. Richmond Nervine Co. v. Richmond, 40 102 position, Hartmann's Manufacture." Up to While Gelien acted as consignee he prepared and issued a show card and also letter heads and circulars with "Rahtjen's Composition Paint, known as the German Paint," on the cards and on the heading of his letters and circulars, and also directly underneath was the picture of a vessel. The show cards and circulars were issued for the purpose of advertising the paint, and the show card was copyrighted by Gelien for himself. The defendant and petitioner then prayed this court for a writ of certiorari, which was granted, and the case thus brought here. The trademark in regard to which this contest arises pertains to a certain kind of paint for the protection of ships' bottoms from rust and from vegetable or animal growth thereon, either in salt or fresh water. The paint was of three kinds, numbered, respectively, Nos. 1, 2, and 3. The evidence in the record shows that some time between the years 1860 and 1865 one John Rahtjen invented in Germany a particular kind of paint for the purpose above mentioned. In connection with his sons he began in 1865 to manufacture the paint for general use, and it speedily acquired a high reputation among owners of shipping as valuable for the purposes intended. The elder Rahtjer. never obtained a patent for the article in Germany; neither did he or his sons apply for or obtain one in the United States. After the assignment to Suter, Hartmann, They first shipped some of the paint manu-& Co. of the exclusive right of sale in the [3]factured by them in Germany *to the United United States, and up to the year 1883, that States in 1870, consigned to Henry Gelien. firm sent the paints to the United States They did not put it upon the market by under the description of "Rahtjen's Patent sending generally to those who might wish Composition," and the Rahtjens themselves to use it, but all their consignments from sent no more paint to the United States 1870 to 1878 were made to Gelien. Under from Germany. what marks he sold the article does not appear. On November 19, 1869, one of the firm wrote to Mr. Gelien from Bremerhaven, making him the sole agent of the firm for the sale of its paint in the United States, and informing him that they had not obtained a patent for their composition in America, nor applied for one in the United States, as there was no danger in introducing the composition in America, the invention not being of a nature facilitating good imitations. The father died in 1873, after which the sons continued the business. In 1873 they entered into negotiations with Suter, Hartmann, & Co., in England, for the sale of their paint in that country, and on November 29, 1873, Heinrich Rahtjen obtained in England a patent for the paint for the term of fourteen years from the date thereof, provided, among other conditions, he should at the end of seven years pay a stamp duty of £100, and in case he did not Pay, the patent was to "cease, determine, for seven years, or until November 29, 1880, and become void." It remained in existence and then ceased because of the failure to pay the £100 stamp duty as provided for in the patent. Gelien was succeeded as the consignee of the paint in the United States, in 1878, by the firm of Hartmann, La Doux, & Maecker, The label used by Suter, Hartmann, & Co. to whom for a short time the paint was con- in sending the paint to their different agents signed from Germany, and then it was sent and customers contained the words "Rahtthem from England through Rahtjen's asjen's Patent Composition" and "None gensigns there. The Hartmann firm was suc-uine without this signature, Suter, Hartceeded in July, 1886, by Emil Maecker, as mann, & Co." These words were used by agent for the sale of the paint in the United them from the outset of their career as conStates, and on January 1, 1889, Maecker signees for the composition. was succeeded by one Otto L. Petersen, and in 1891 Petersen was succeeded by the respondent corporation, and was made its president. On January 15, 1878, "Joh" Rahtjen assigned to "Messrs. Suter, Hartmann, & Co., in London, the exclusive right of sale of my patent composition paint for the United States of North America, for the period of twelve years from the commencement of 1878 to the end of 1889." After 1870 the firm of Hartmann Brothers, or Suter, Hartmann, & Co., manufactured the composition for themselves in England, by the license of the Rahtjens, and for a time after 1874 Rabtjen also manufactured in England as well as in Germany. During this time the composition when manufactured by Hartmar was marked "Rahtjen's Patent Com In May, 1883, two years and a half after the expiration of the English patent, the predecessors of the petitioner commenced in England to make and sell this paint, and in 1884 they sent it to the United States under the name of "Rahtjen's Composition, Holzapfel's Manufacture." *On June 25, 1883, John Rahtjen filed with [5] the English office an application for registration as a trademark of the words "Genu ine Rahtjen's Composition for Ships' Bot toms," &c. This application was opposed by Holzapfel & Co., through their solicitors, and no counter statement having been filed by Rahtjen the application was deemed to be withdrawn. On July 7, 1883, Rahtjen filed another application for registration of the words "Kahtjen Composition." This, too, was op HARTMANN'S MANUFACTURE The application was granted, and from that time they had an exclusive right to use that mark. It is not charged that the defendant has ever in any way imitated or infringed upon it. in England the exclusive right to manufacture it there, and so in their manufacture it was described as "Rahtjen's Composition. Hartmann Brothers' Manufacture." In 1888 Suter, Hartmann, & Rahtjen's Composition Company (Limited) was formed, and Suter, Hartmann, & Co. assigned their rights and interests in the paint and trademark to that company, and in 1891 the respondent company was formed and the English company transferred to it all rights to the trademarks belonging to and used by the Engiish company in America, and agreed not to carry on any business of a like character in the United States. In 1899 complaint was made before the court of commerce sitting at Antwerp, by Rahtjen and by Suter, Hartmann, & Co., *against defendant W. Wright, in which they [7] complained of the defendant that he had put on the sign of his house the inscription "Manufacturers of Rahtjen's Composition," and that in his prospectus and other publications he announced that he sells the "Original Rahtjen's Composition for Ships' Bottoms, manufactured by the London Oil & Colour Co., Limited." This use of the name of the complainant by the defendant, the court held, constituted an illegal act, and, even if the complainants had not retained their right to the use of the words "Rahtjen's Composition," that On January 9, 1884, Suter, Hartmann, & the defendant had not acquired the right to Co. filed an application for the registration use the name in such a way as to cause the of the words "Rahtjen's Patent Composition public to believe that his product was the for Ships' Bottoms, Buoys, &c. Directions. product of Rahtjen or of his delegates. The Suter, Hartmann, & Co." In their applica- defendant was therefore condemned in judgtion for registration they said: "We do not ment and enjoined from the use of the words claim the exclusive use of the words 'Raht-in future. An appeal was taken from this [6]jen's Patent Composition for Ships' Bottoms, Buoys, &c., Directions, or any of such words, except as part of the combination constituting our trademark, as represented annexed, and to which we claim exclusive right." This trademark was regis tered. The following is a copy: RAHTJEN'S PATENT COMPOSITION, SUTER, HARTMANN & Co. There has never been any intringement of it by defendant, but it has used the words "Rahtjen's Composition" in connection with the statement that it was manufactured by Holzapfel & Co., and it has so used them on goods sold in the United States, and did so at the time of the commencement of this suit. Before the assignment to Suter, Hartmann, & Co. of the exclusive right to sell the composition in the United States, Rahtjen had transferred to Hartmann Brothers 183 U. S. decision and the court above reversed the that there was no longer any exclusive property in the words used, and that the defendants should therefore be discharged. Messrs. William McAdoo and John G. Carlisle argued the cause, and, with Mr. R. B. McMaster, filed a brief for petitioner: It has been uniformly held by our courts that the name given to the article during the life of the patent becomes public property when the patent expires. Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002; Singer Mfg. Co. v. Riley, 11 Fed. 706; Singcr Mfg. Co. v. Stanage, 6 Fed. 279; Singer Mfg. Co. v. Larsen, 8 Biss. 151, Fed. Cas. No. 12,902; Ex parte Yale & T. Mfg. Co. 81 Off. Gaz. 801; Fairbanks v. Jacobus, 14 Blatchf, 337, Fed. Cas. No. 4,608; Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. 128 U. S. 598, 32 L. ed. 535, 9 Sup. Ct. Rep. 166; Goodyear Rubber Co. v. Duy, 22 Fed. 44; Leclancha Battery Co. v. Western Electric Co. 21 Fed. 538, 23 Fed. 276; Centaur Co. v. Heinsfurter, 28 C. C. A. 581, 56 U. S. App. 7, 84 Fed. 955; Centaur Co. v. Killenberger, 87 Fed. 725; Centaur Co. v. Neathery, 34 C. C. A. 118, 62 U. S. App. 357, 91 Fed. 891; Centaur Co. v. Marshall, 92 Fed. 605. And the same rule has been laid down in England. Cheavin v. Walker, L. R. 5 Ch. Div. 850; Wheeler & W. Mfg. Co. v. Shakespear, 39 L. J. Ch. N. S. 36; Linoleum Mfg. Co. v. Nairn, 47 L. J. Ch. N. S. 431. The complainant, surely, cannot have a trademark in this country in a name which is common property everywhere else. The foreign history and status of a trademark claimed in this country may be considered in our courts. Saxlehner v. Eisner & M. Co. 179 U. S. 19, 45 L. ed. 60, 21 Sup. Ct. Rep. 7; Dadirrian v. Yacubian, 39 C. C. A. 321, 98 Fed. 872, Affirming 90 Fed. 812, 72 Fed. 1010. The act of the predecessors of the complainant in disclaiming the exclusive use of the word "Rahtjen" when they applied for the registration of a trademark in England estops complainant from claiming such exclusive right now in this country. Rosenthal v. Reynolds, 61 L. J. Ch. N. S. 508; Richter v. Anchor Remedy Co. 52 Fed. 455. The name "Rahtjen's Composition" has long ceased to denote the source of manufacture, and has become the generic description of the article. Elgin National Watch Co. v. Illinois Watch Case Co. 179 U. S. 665, 45 L. ed. 365, 21 Sup. Ct. Rep. 270; Edison v. Hawthorne, 106 Fed. 172. The complainant, having stood silently by for many years and allowed the defendant's predecessors to build up an established business in "Rahtjen's Composition," and the business having been subsequently incorporated with a large capital and numerous stockholders, is forever estopped from enjoining or interfering with the petitioner's use of the word "Rahtjen's." Mackall v. Casilear, 137 U. S. 556, 34 L. ed. 776, 11 Sup. Ct. Rep. 178; Hammond v. Hopkins, 143 U. S. 224, 36 L. ed. 134, 12 Sup. Ct. Rep. 418; Abraham v. Ordway, 158 U. S. 416, 39 L. ed. 1036, 15 Sup. Ct. Rep. 894; Prince's Metallic Paint Co. v. Prince Mfg. Co. 6 C. C. A. 647, 17 U. S. App. 145, 57 Fed. 938, Affirming 53 Fed. 493; La Republique Francaise v. Schultz, 94 Fed. 500; Starrett v. J. Stevens Arms & Tool Co. 96 Fed. 244; Richardson v. D. M. Osborne & Co. 36 C. C. A. 610, 93 Fed. 828, Affirming 82 Fed. 95. Messrs. Timothy D. Merwin and Thomas B. Kerr argued the cause and filed a brief for respondent: A trademark, or a name originally adopted and used as a trademark, does not become public property merely because the name is subsequently adopted and applied geographically. Atwater v. Castner, 32 C. C. A. 77, 50 U. S. App. 394, 88 Fed. 642. The trademark is unaffected by the fact that it subsequently becomes the common name of the article. Selchow v. Baker, 93 N. Y. 59. 45 Am. Rep. 169; Burton v. Stratton, 12 Fed. 696; Celluloid Mfg. Co. v. Read, 47 Fed. 712; Celluloid Mfg. Co. v. Cellonite Mfg. Co. 32 Fed. 94. A subsequently granted patent on the article cannot affect the established trademark. Batcheller v. Thomson, 35 C. C. A. 532, 93 Fed. 660. The general statement of the rule as laid down in Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002, in view of the comments upon the cases in foreign courts, cannot be understood to mean that the expiration of a patent in one country makes the name public property in another country. No presumption of the abandonment of the trademark by respondent's predecessors arises from their application for the British patent. Saxlehner v. Eisner & M. Co. 179 U. S. 19, 45 L. ed. 60, 21 Sup. Ct. Rep. 7. The respondent has not been guilty of laches. McLean v. Fleming, 96 U. S. 245, 24 L. ed. 828; Menendez v. Holt, 128 U. S. 514, 32 L. ed. 526, 9 Sup. Ct. Rep. 143; Saxlehner v. Eisner & M. Co. 179 U. S. 19, 45 L. ed. 60, 21 Sup. Ct. Rep. 7. If "Rahtjen's Composition" was a trademark, and was conveyed by him to the respondent, and was not abandoned, and the petitioner was not licensed to use it, then the petitioner had no right to appropriate it, even though it used it in connection with the name "Holzapfel" and the symbol of a propeller. Menendez v. Holt, 128 U. S. 514, 32 L. ed. 526, 9 Sup. Ct. Rep. 143. During the life of a patent the name or mark as truly indicates origin and ownership as if there were no patent. If the patent proves invalid the trademark right is preserved, because there has never been a legal patent monopoly to limit the duration of à trademark monopoly. Sawyer v. Kellogg, 7 Fed. 720; Lorillard v. Wight, 15 Fed. 383. There is no authority for holding that the unauthorized invasion of the rights of the trademark owner by a single infringer can make the trademark generic in character. In strict trademark cases a fraudulent intent to injure the complainant, or an actual misleading of the public, need not be proved, as it will be presumed. Menendez v. Holt, 128 U. S. 514, 32 L. ed. 526, 9 Sup. Ct. Rep. 143; Elgin National Watch Co. v. Ilinois Watch Case Co. 179 U. S. 665, 45 L. ed. 365, 21 Sup. Ct. Rep. 270. Gelien in the years prior to the date of the English patent had so established his business as to entitle him to appeal to a court of equity for the protection of the trademark, and hence the trademark had become so established as to be unaffected by the patent. Co. 78 Fed. 365; Williams v. Rome, W. & O. R. Co. 18 Blatchf. 181, 2 Fed. 702; Bispham, Eq. § 404, p. 517. It is well settled that a writ of injunction carries with it, as incident to it and as part of the relief, the right to damages. Shepard v. Manhattan R. Co. 117 N. Y. 442, 23 N. E. 30; Henderson v. New York C. R. Co. 78 N. Y. 423; Williams v. New York C. R. Co. 16 N. Y. 97, 69 Am. Dec. 651; Beach, Inj. § 1400, see also § 10; Canton Steel Roofing Co. v. Kanneberg, 51 Fed. 599. Marks applied to goods of foreign origin in the foreign country, and under which they were marketed in this country, have been treated as having the same legal force and effect as if they had been applied to the goods in this country. Saxlehner v. Eisner & M. Co. 179 U. S. 19, 45 L. ed. 60, 21 Sup. Ct. Rep. 7; Kathreiner's Malzkaffee, etc. v. Pastor Kneipp MediKathreiner's Malzkaffee, etc. v. Pastor cine Co. 27 C. C. A. 351, 53 U. S. App. 425, Kneipp Medicine Co. 27 C. C. A. 351, 53 U. 82 Fed. 321; J. & P. Baltz Brewing Co. v. S. App. 425, 82 Fed. 321; Hall v. Barrows, Kaiserbrauerei, B. & Co. 20 C. C. A. 402, 39 32 L. J. Ch. N. S. 548. U. S. App. 229, 74 Fed. 222; Richter v. ReyIn the registration of trademarks it is im-nolds, 8 C. C. A. 220, 17 U. S. App. 427, 59 material whether the registrant can become Fed. 580; La Republique Francaise v. Sarathe exclusive owner of the trademark toga Vichy Springs Co. 46 C. C. A. 418, 107 abroad. Fed. 459. Ex parte Portland-Cement-Fabrik "Germania," 64 Off. Gaz. 858. By analogous rule a prior foreign patent does not prevent the issuance of a broader American patent. 2 Robinson, Patents, § 461; Faure v. Bradley, 44 Off. Gaz. 945. A trademark may be lost to its owner in a foreign country and become public property there without affecting the rights in this country. J. & P. Baltz Brewing Co. v. Kaiserbrauerei, B. & Co. 20 C. C. A. 402, 39 U. S. App. 229, 74 Fed. 222; Saxlehner v. Eisner & M. Co. 179 U. S. 19, 45 L. ed. 60, 21 Sup. Ct. Rep. 7. Neither the records of foreign trademark registration proceedings, nor the records of proceedings and decisions in foreign courts, should have been put in evidence, and, having been erroneously included, should not now be considered by this court. All such matters are irrelevant and immaterial. Carlsbad v. Kutnow, 18 C. C. A. 24, 35 U. S. App. 753, 71 Fed. 167. Even if this court shall find that there was such laches on the part of respondent in bringing its suit that it must be deprived of an accounting for infringing sales prior to suit, we can see no reason why it should be deprived of an accounting from the date of bringing suit. *Mr. Justice Peckham, after making the [8] above statement of facts, delivered the opinion of the court: We are of opinion that no valid trademark was proved on the part of the Rahtjens, in connection with the paint sent by them from Germany to their agents in the United States prior to 1873, when they procured a patent in England for their compo sition. It appears from the record that from 1870 to 1879, or late in 1878, the paint was manufactured in Germany by Rahtjen, and sent to the United States in casks or packages marked "Rahtjen's Patent Composition Paint." Prior to November, 1873, the article was not patented anywhere, and a description of it as a patented article had no basis in fact, and was a false statement tending to deceive a purchaser of the article. No right to a trademark which includes the word "patent," and which describes the article as "patented," can arise when there is and has been no patent; nor is the claim a valid one for the other words used, where it is based upon their use in connection with that word. A symbol or label claimed as a trademark, so constituted or worded as to make or contain a distinct assertion which is false, will not be recognized, nor can any right to its exclusive use be maintained. Manhattan Menendez v. Holt, 128 U. S. 514, 32 L. ed. Medicine Co. v. Wood, 108 U. S. 218, 225, 27 526. 9 Sup. Ct. Rep. 143. L. ed. 706, 708, 2 Sup. Ct. Rep. 436; Allan B. Wrisley Co. v. Iowa Soap Co. 104 Fed. 548. Where a defendant has committed infringing acts after notice of the complainant's assertion of his exclusive rights he cannot be heard to object to the proper penalty for such acts, whether injunction or damages. Edison Electric Light Co. v. Sawyer-Man Electric Co. 3 C. C. A. 605, 11 U. S. App. 712, 53 Fed. 592; Campbell Printing-Press & Mfg. Co. v. Manhattan R. Co. 49 Fed. 930: Thomson-Houston Electric Co. v. Union R. In 1873 an English patent had been obtained, and from that time to 1878, when the Rahtjens assigned the exclusive right of sale in the United States to Suter, Hartmann, & Co., the words "Rahtjen's Patent Composition" were used on casks containing the paint sent by the Rahtjens to the United States, and must have referred to the Eng |