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the business as before; the good will is inseparable from the business itself." In MacMahon Pharmacal Co. v. Denver Chem. Mfg. Co. (29), the rule was stated to be: "A trade-mark cannot be assigned or its use licensed, except as incidental to a transfer of the business or property in connection with which it has been used. An assignment or license without such a transfer is totally irreconcilable with the theory upon which the value of a trade-mark depends, and its appropriation by an individual is permitted;" and in another case it was said that no one could claim the right to sell his goods as goods manufactured by another, as this would be a fraud on the public (30).

§ 52. Notice to public. It is the duty of a registrant to give notice to the public that a trade-mark is registered by marking it with the words "Registered in U. S. Patent Office," or "Reg. U. S. Pat. Off." (31). In any suit for infringement by a party failing so to give notice of registration, no damages can be recovered except on proof that the defendant was duly notified of infringement, and continued the same after such notice.

§ 53. Registration prima facie evidence of ownership. The registration of a trade-mark under the provisions of the act is prima facie evidence of ownership.

§ 54. Infringement. Any person who, without the consent of the owner, uses a reproduction, counterfeit, copy, or colorable imitation of any registered trade-mark,

(29) 113 Fed. 468, 474.

(30) Whitthaus v. Braun, 44 Md. 803, 306. (31) Trade-mark Act, Sec. 28.

upon merchandise of substantially the same descriptive properties, and in commerce among the several states, or with a foreign country, or with the Indian tribes, is guilty of infringement of such registered trade-mark, under the act (32). It should be noted that the act expressly confines cases of infringement to use in the commerce over which Congress has control; as the act purports to be, and is, merely a regulation of such commerce.

§ 55. Importations. The Act also prohibits the importation into the United States of any article which either copies or simulates the name of any domestic manufacture, or manufacturer or trader; or of any manufacturer or trader located in any foreign country which, by treaty, convention, or law affords similar privileges to citizens of the United States; or which copies or simulates a trademark registered in accordance with the provisions of the Act; or which bears a name or mark calculated to induce the public to believe that the article is manufactured in the United States, or that it is manufactured in any foreign country or locality other than the country or locality in which it is in fact manufactured (33).

In order to aid the officers of the customs in enforcing this prohibition, it is also provided that such manufacturers or traders as are entitled to its protection may register their names and residences, the names of the localities in which their goods are manufactured, and copies of the certificates of registration of their trade-marks, with the Treasury Department, and may also furnish the Department with facsimiles of such names.

(32) Ibid., Sec. 16. (33) Ibid., Sec. 27.

§ 56. Interference of registered marks. If two or more trade-marks, bearing such near resemblance to each other as is likely to cause confusion or mistake in the mind of the public or to deceive purchasers, are registered by the Patent Office, either through its failure to find an earlier registration upon the examination of a later one, or otherwise, any person interested in any one of them may have relief against the others by a suit in equity. In such suit the court may adjudge either of the registrations void in whole or in part, according to the interest of the parties in the trade-mark, and may order the certificate of registration to be delivered up to the Commissioner of Patents for cancellation (34).

In such a suit in equity to cancel the registration of an interfering mark, the issue ordinarily would be which party is the rightful owner of the mark, and this question would turn upon the fact of prior adoption and use by one party or the other, as above noted, and not upon the priority of registration; although the question of delay would also be considered, if raised.

§ 57. Jurisdiction of courts. The circuit and territorial courts of the United States and the supreme court of the District of Columbia have original jurisdiction, and the circuit courts of appeals of the United States and the court of appeals of the District of Columbia have appellate jurisdiction of all suits at law or in equity, respecting trade-marks registered in accordance with the provisions of the Act, arising under the present Act, without regard to the amount in controversy.

(34) Ibid., Sec. 22.

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This jurisdiction is not exclusive of the jurisdiction of the state courts to enforce rights in regard to trademarks under the common law, or under state statutes; nor of the jurisdiction of the Federal courts on the ground of diversity of citizenship, or some other ground, sitting in the various states, to enforce such rights.

§ 58. Remedies in law and equity. In an action at law for infringement, under the Trade-Mark Act, whenever a verdict is rendered for the plaintiff, the court may enter judgment for any sum above the amount found by the verdict as the actual damages, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs (35).

The several courts vested with jurisdiction of cases arising under the act are also given power to grant injunctions to prevent the violation of any right of the owner of a trade-mark registerd under the Act, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for wrongful use of a trademark, the complainant may recover, in addition to the defendant's profits, his own damages. The court may also increase such damages, in its discretion, in the same manner as in actions at law, noted above (36).

In assessing profits the plaintiff is required to prove the defendant's sales only; the defendant being required to prove all elements of cost which are claimed. In such a case, therefore, the plaintiff makes a prima facie case by proving the gross amount of the defendant's sales. The

(35) Ibid., Sec. 16. (36) Ibid., Sec. 19.

burden of proof is then upon the latter to prove the amount of his expenses connected with such sales, and the difference between such amounts is the sum which may be awarded to the plaintiff.

§ 59. Destruction of labels, etc. In any case involving the right to a trade-mark registered in accordance with the provisions of the Act, in which the verdict has been found for the plaintiff, or an injunction issued, the court may order that all labels, signs, prints, packages, wrappers, or receptacles in the possession of the defendant, bearing the trade-mark of the plaintiff, or complainant, or any reproduction, counterfeit, copy, or colorable imitation of it, shall be delivered up and destroyed (37).

(37) Ibid., Sec. 20.

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