similar to this, except that there was in that case considerable fault to be found with the conduct of the plaintiff, an order was made similar to that here in question. We are of opinion that the decree appealed from was correct in ordering an account of the defendants' profits since the filing of the bill to be taken.

But counsel for the defendants argues that only those profits are to be accounted for which are actually shown to be due to the assistance derived from the plaintiffs' trademark. So far as this doctrine finds support in the decisions relied on, it seems to us to rest upon a confusion between damages and profits. It will appear, by reference to the cases which have already been cited, that in England in such cases a plaintiff is ordinarily required to elect between damages and profits, while it has been said in many cases in this country that equity, having once obtained jurisdiction, will, where it has granted an injunction, give both damages and profits, so far as this is necessary to secure full compensation. But in this case the order of reference was limited to an account of profits, no damages being allowed; and no question as to the assessment of damages comes before us. ...

The result is that the decree appealed from must be affirmed, and the defendants' exceptions to the second report of the master must be overruled, and a final decree entered for the plaintiff accordingly. So ordered.

182. BRADY, J., in Jurgensen v. Alexander. (1862. Common Pleas of New York. 14 How. Pr. 269; settling the form of injunction in a case of infringement of trademark.) Having in and by said decision determined, as a conclusion of law, that the plaintiff is entitled to the judgment hereinafter set forth, I direct the same to be entered accordingly :

First. That the defendant, James Alexander, his agents, clerks, servants, and all persons employed under or in connection with him, be perpetually enjoined and restrained from disposing of, selling, or causing to be disposed of or sold, any watches bearing the false, simulated, and spurious stamp or mark, "Jules Jurgensen, Copenhagen."

Second. That the said defendant do produce before Nathaniel Jarvis, Jr., Esquire, appointed herein referee for such purpose, the said watches, which at the time of the commencement of this suit were in the defendant's possession, and had upon them the said false, simulated, and spurious trademark, to be erased or liberated therefrom, by or under the direction of the said referee, at the cost and expense of the said defendant.

183. LACOMBE, J., in N. K. Fairbank Co. v. R. W. Bell Manufacturing Co. (1896. C. C. A., 2d Circuit. 77 Fed. 869, 878; settling the form of an injunction in a case of unfair trade.) Injunction should issue against putting up and selling or offering for sale “the particular form of package which has been referred to in the bill and put in evidence as 'Defendant's Second Package,' or any other form of package which shall, by reason of the collocation of size, shape, colors, lettering, spacing, and ornamentation, present a general appearance as closely resembling the 'Complainant's Package,' referred to in the bill and marked in evidence, as does the said 'Defendant's Second Package.'

This would seem to be sufficient; but, since so much has been said about the impossibility of framing any decree which would prevent the sale of the package complained of, and yet not give complainant the monopoly of yellow paper for its wrappers, the following clause may be added: "This injunction shall not be construed as restraining defendant from selling packages of the size, weight, and shape of complainant's package, nor from using the designation 'Buffalo Soap Powder,' nor from making a powder having the appearance of complainant's 'Gold Dust,' nor from using paper of a yellow color as wrappers for its packages, provided such packages are so differentiated in general appearance from said 'Complainant's Package' that they are not calculated to deceive the ordinary purchaser." 1

(3) Relation of the Statutory R gistered Trademark Right to the Common-law Right against Unfair Trade.

184. THAYER, J., in United States v. Braun. (U. S. District Court, E. D. Missouri. 1889. 39 Fed. 775.) These are indictments under section 1 of the Act of August 14, 1876, to punish counterfeiting of trademarks that have been registered in accordance with the laws of the United States. The section is as follows:

"Be it enacted that every person who shall, with intent to defraud, deal in or sell . . . any goods of substantially the same descriptive properties as those referred to in the registration of any trademark, pursuant to the statutes of the United States, to which, or to the package in which, the same are put up, is fraudulently affixed said trademark, or any colorable imitation thereof, calculated to deceive the public, knowing the same to be counterfeit or not the genuine goods referred to in said registration, shall, on conviction thereof, be punished," etc. Vide 1 Supp. Rev. St. U. S. 241.

The law was evidently designed to punish those who, with fraudulent intent, pirate a valid trademark which has been duly registered by the commissioner of patents. If a person, by any means, secures the registration of a mark, symbol, word, or device, claiming it to be a trademark, which, according to the rules of the common law, is not a valid trademark, another person who affixes the same mark, symbol, or device to his own goods, and sells them, cannot be punished under the penal statute above quoted. Registration does not create a trademark; nor is it conclusive proof that the person procuring registration has a valid trademark. Property in a trademark can only be acquired by the adoption of some mark, symbol, sign, or word susceptible of being used as a trademark, and by the actual application of the same to goods, wares, or merchandise of a certain class, so that it serves to indicate the origin or ownership of the particular commodity. Congress, by the Act of March 3, 1881, (1 Supp. Rev. St. U. S. 606,) has merely provided for the registration of a certain class of trademarks used in commerce with foreign nations or Indian tribes, when, according to common-law tests, a right to use the mark, symbol,

1 [ESSAYS:

Guy Cunningham and Joseph Warren, "A Phase of Accounting in Trademark Cases." (H. L. R., XX, 620.)

NOTES:

"Infringement of trademark: Measure of damages." (C. L. R., V, 238, 251.)]

or word as a trademark is established to the satisfaction of the commissioner of patents. Admission to registration under the Act of March 3, 1881, is merely an admission on the part of the government that the applicant for registration is the owner of a valid trademark. The certificate of registration granted by the commissioner is only prima facie evidence of that fact, but it does not conclude a third party. The certificate is not a grant of any right or privilege; it is merely a recognition on the part of the government of the existence of an asserted exclusive right to affix a certain mark, symbol, word, or device on certain goods, as a trademark. Browne, Trade-Marks, §§ 338, 374-378,

inclusive.

Necessarily, therefore, in a criminal proceeding under the Act of August 14, 1876, the question whether the trademark involved (it having been admitted to registration) is valid, is an issuable question. . . . An indictment ought to allege facts showing the existence of a valid trademark as well as the fact that registration has been obtained, inasmuch as the registration does not create a trademark; and inasmuch as the certificate of registration is, at best, only convenient prima facie evidence that a certain word or symbol has become a trademark. The owner of a trademark acquires the same by acts wholly independent of the registration thereof, and registration is not even necessary to entitle him to protection in a civil proceeding, although it is necessary to secure the protection of the penal statute.

185. EDISON v. THOMAS A. EDISON JUNIOR CHEMICAL COMPANY

UNITED STATES CIRCUIT COURT, DISTRICT OF DELAWARE. 1901 128 Fed. 1013

IN EQUITY.

Howard W. Hayes, for complainant.

William B. Whitney, for defendant.

BRADFORD, District Judge. The Thomas A. Edison, Jr., Chemical Company, a corporation of Delaware, has demurred to á bill brought against it by Thomas A. Edison, a citizen of New Jersey, for alleged infringement of a trademark. In substance the bill is to the effect that the complainant was, December 15, 1897, and ever since has been, and now is domiciled in the United States, and was on that day, and ever since has been, and now is

"the owner of a trademark for phonographs, phonographic supplies, kinetoscopes, kinetoscope films, numbering machines, batteries, X-ray apparatus, electromedical appliances, and other philosophical and scientific apparatus, then and still used by your orator in commerce with foreign nations,' including, among others, Great Britain, France, and Germany, "consisting of the autographic name 'Thomas A. Edison,' the words and letters being formed in characteristic autographic script with the loop of the first letter extending above and over the other letters constituting the mark, the essential feature of which is the word 'Edison' formed in characteristic autographic script"; that the complainant having in all respects complied with the provisions of law and the regulations prescribed by the Commissioner of Patents

relating to the registration of trademarks, duly obtained June 19, 1900, the registration and a certificate of registration of his above-mentioned trademark for use in connection with

"phonographs, parts of phonographs, phonographic blanks, kinetoscopes, kineioscope-films, numbering-machines, batteries, X-ray apparatus, and electromedical appliances";

that since the registration of his trademark the complainant has manufactured and sold large numbers of batteries and electromedical apparatus and other scientific apparatus both in the United States and in many foreign countries, and the defendant, without his license, has manufactured and sold a large number of batteries and electromedical apparatus called the "Magno-Electric Vitalizer," having substantially the same descriptive properties as the batteries and electromedical apparatus referred to in the registration of the trademark, upon each of which was placed or caused to be placed by the defendant the complainant's trademark, or a copy, counterfeit or colorable imitation, so nearly resembling it as to be likely to cause confusion or mistake in the mind of the public and to deceive purchasers; that this suit is between citizens of different States; and that the matter actually in controversy exceeds the sum or value of $2,000, exclusive of interest and costs. The bill contains the usual prayers. The causes of demurrer are that "the registration of the complainant's alleged trademark and the certificate of registry of the said alleged trademark issued to the complainant, as set forth in said bill, and each and every part thereof, are void and of no effect in law, because that the statement which the complainant caused to be recorded in the Patent Office did not comply with the conditions and requirements of the law in such case made and provided, and further, because that, without authority of law and contrary to the provisions of the statute in such case made and provided, the said registration was had, and the said certificate of registry was issued, for a trademark for, and comprising more than a single class of merchandise."

Whatever may be the ultimate determination of this case, I am satisfied that the demurrer should not be sustained. It is confined to the allegations of the bill touching the registration of the trademark. If it be assumed that the registration did not conform to law and was a nullity, it would by no means necessarily follow from that fact that no bill could be maintained for an infringement of the trademark. The Act of March 3, 1881, c. 138, 21 Stat. 502, 1 Supp. Rev. St. p. 322, providing for the registration of trademarks and their protection, does not create any trademark. Upon its face it presupposes the existence of a valid trademark which may be registered on compliance with the requirements of the law. Registration under the Act does not affect in any manner the nature or function of the trademark. Its only effect is to confer upon the owners of trademarks certain benefits or privileges which they would not otherwise possess. If, owing to non-compli

ance with the provision of the Act, the registration of a trademark be void, the trademark is not thereby nullified or injuriously affected, but still retains the nature and properties of a common-law trademark, for the infringement of which suit may be maintained in the Federal Courts if the requisite diversity of citizenship exists and the requisite jurisdictional amount is involved. Here both appear upon the record. There is no ground of demurrer, nor has it been contended by counsel, that the alleged trademark of the complainant is not in its nature or characteristics a mark, word, or symbol capable of appropriation as a valid common-law trademark. Assuming it to be valid, it could be appropriated and affixed by the complainant as well to many articles as to only one, and could be infringed as well with respect to only one as to many; and the allegations of the bill and its prayers are broad enough to support a decree for the complainant even on the assumption that the registration of his trademark was a nullity. On the whole I think that this case should be decided not on the demurrer but only after a hearing on proper pleading and evidence. The demurrer must, therefore, be overruled with costs, and the defendant required to answer or plead to the bill by the first rule day in May next, with the right to set forth in its pleadings the matters referred to in the causes of demurrer.

186. SARTOR v. SCHADEN

SUPREME COURT OF IOWA. 1904

125 Ia. 696, 101 N. W. 511

APPEAL from District Court, Polk County; James A. Howe, Judge. Suit in equity to enjoin defendant from using a trademark or trade name adopted by plaintiff for a brand of cigars manufactured and sold by him in the city of Des Moines and immediate vicinity. The trial Court granted the relief asked, and defendant appeals. Affirmed. Henry F. Griffiths and S. C. Sweet, for appellant.

Orwig & Lane, for appellee.

DEEMER, C. J. The original petition counted upon a registered trademark adopted by plaintiff for his cigars, being the word "She" in large letters, which was pasted upon the inside lid of cigar boxes containing cigars manufactured by plaintiff. This was amended by claiming that plaintiff had adopted the word as a trade name, under which he had built up a large demand for his goods, and that defendant was guilty of unfair competition or trade in adopting the same name or label, not only with intent to deceive the public, but for the purpose of securing the trade theretofore established by the plaintiff. A great many defences were interposed, to some of which we shall refer during the course of this opinion. The case was tried on an agreed statement of facts and some exhibits introduced by the parties, and a decree for plaintiff was rendered as prayed. From this agreed statement and