E.C. Atkins & Co. v. Moore, 212 U.S. 285 (1909)
Case details
Citation
212 U.S. 285
Full caption
E. C. ATKINS & COMPANY v. MOORE, COMMISSIONER OF PATENTS.
Country
United States
Jurisdiction
Federal
Court
Supreme Court of the United States
Decided
Feb. 23, 1909
E. C. ATKINS & COMPANY v. MOORE, COMMISSIONER OF PATENTS.
APPEAL FROM AND IN ERROR TO THE COURT OF APPEALS OF THE
DISTRICT OF COLUMBIA.
No. 86. Argued January 22, 1909.—Decided February 23, 1909.
Proceedings under the Trade-Mark Act of February 20, 1905, c. 592, 33 Stat. 724, and the specific provisions of § 9 thereof, are governed by the same rules of practice and procedure as in the instance of patents; and decisions of the Court of Appeals of the District of Columbia on appeals from the Commissioner of Patents are not reviewable by the court. Frosch v. Moore, 211 U. S. 1, followed;1 Gaines v. Knecht & Son, 27 App. D. C. 530, approved.
Pla int iff s filed their application for a trade-mark on June 12,1905, in which it was recited that—
“The trade-mark consists of a symbol composed of the letters ‘AAA’ . . . The trade-mark is usually displayed on the goods, by etching, stamping or otherwise marking the same upon the blade of the saw, and by inscribing same upon the packages containing such saws.”
This was amended August 30,1905, by adding the sentence—“The trade-mark is shown with the letters arranged in the form of a monogram.”
1
The headnote in Frosch v. Moore, 211 U. S. 1, is as follows: A decision of the Court of Appeals of the District of Columbia in an appeal from the Commissioner of Patents under Rev. Stat., §§ 4914, 4915, § 9 of the act of February 9, 1893, c. 74, 27 Stat. 434, and § 780, Rev. Stat., District of Columbia, is interlocutory and not final and is not reviewable by this court under § 8 of the act of February 9,1893, either by appeal or writ of error, Rousseau v, Brown, 21 App. D. C. 73, approved, No. 198. Argued October 14, 1908.—Decided February 23, 1909. Where a statute provides for an appeal or a writ of error to a specific court it must be regarded as a repeal of any previous statute providing for an appeal or a writ of error to another court. Brown v. United States, 171 U. S. 631. Decisions of the Court of Appeals of the United States for the Indian Territory are final except as made subject to review by some express statutory provision. The provisions in § 12 of the act of March 3,1905, c. 1479,33 Stat. 1081, for appeals and writs of error from the United States courts in Indian
The examiner suggested that the description of the trade-mark should be amended so as to read—
“The trade-mark consists of a monogram composed of the letters ‘A.A.A.’”
Plaintiffs declined to comply with the suggestion, and appealed from the ruling of the examiner that such amendment should be made to the Commissioner of Patents, who, on February 20, 1906, overruled the decision of the examiner and held that the description was sufficient.
April 27, 1906, plaintiffs were notified that their—
“Application for the registration of a trade-mark for a symbol composed of the letters ‘AAA,’ for saws of all kinds, filed June 12,1905, Ser. No. 7998, has been examined and passed for publication, in compliance with section 6 of the act authorizing the registration of trade-marks, approved February 20, 1905. The mark will be published in the Official Gazette of May 15, 1906.”
The act of February 20, 1905, c. 592, § 1, 33 Stat. 724, provided that the applicant should file an application in writing, which should contain, among other things:
“A description of the trade-mark itself and a statement of the mode in which the same is applied and affixed to goods and the length of time during which the trade-mark has been used. With this statement shall be filed a drawing of the trade-mark, signed by the applicant or his attorney, and such number of specimens of the trade-mark, as actually used, as may be required by the Commissioner of Patents.”
This act was amended by the act of May 4, 1906, c. 2081, § 1, 34 Stat. 168, by inserting after the words “description of the trade-mark itself,” the words “only when needed to express colors not shown in the drawing.”
On June 21, 1906, the Patent Office sent plaintiffs the following communication:
“Attention is directed to the act approved May 4,1906, providing for a description of the trade-mark itself only when needed to express colors not shown in the drawing.
212 U. S. Argument for Appellant and Plaintiff in Error.
11 Inasmuch as the trade-mark covered by this application cannot be registered until after July 1, 1906, when said act takes effect, applicant should direct the cancellation of the present description and of all of the preamble to the statement following the words 'have adopted for my use,’ and the substitution therefor of the following words:' the trade-mark shown in the accompanying drawing.''
"If colors form a material part of the mark, a brief reference thereto should follow.
"An amendment as above indicated should be promptly filed to avoid delay in the use of the certificate.”
Plaintiffs refused to comply with this suggestion, and, on July 16,1906, the examiner declined to pass the application for registration.
A petition was thereupon presented by plaintiffs to the Commissioner, seeking the overruling of the action of the examiner, and, on November 22, 1906, the petition was denied.
An appeal was prosecuted to the Court of Appeals, which affirmed the decision of the Commissioner of Patents, and directed the clerk to "certify this opinion to the Commissioner of Patents, according to law.”
An appeal and a writ of error were allowed.
Mr. Chester Bradford, with whom Mr. Arthur M. Hood and Mr.E.W. Bradford were on the brief, for appellant and plaintiff in error:
This court has jurisdiction of this case, which is not governed by the cases of Gaines v. Knecht, post, p. 561, and Frasch v. Moore> 211 U. S. 1. In order that a case may be brought here from the Court of Appeals of the District of Columbia, two conditions must concurrently exist: There must be a final judgment or decree, and a subject-matter defined by the statute must exist. Both these conditions exist in the case at bar. They did not exist in the cases above cited, which are clearly distinguishable. In the Gaines case and Frasch case there was no final judgment or decree upon the matter sought
Argument for Appellee and Defendant in Error. 212 U. S.
to be reviewed, and there was therefore no statutory authority for bringing the cases to this court.
Those cases are not authorities in this case also, because the decision in this case was final, and there is no other means by which appellant and plaintiff in error can secure relief if it be denied here. The decision of the Commissioner, sustaining the ruling of the examiner, as affirmed by the Court of Appeals, was final, and binding upon the applicant. There is no other proceeding known to the law than that which has been adopted in coming to this court by which these actions may be reviewed.
When the appeal was taken and the writ of error sued out, it was supposed that the case of Steinmetz v. Allen, 192 U. S. 543, was sufficient authority for the proceeding. That was a case brought here from the same tribunal and under the same section of the statute, and in that case this court expressly held that it had jurisdiction. See also: Bernardin v. Duell, 172 U. S. 576; Butterworth v. Hoe, 112 U. S. 50. The cases cited by appellee and defendant in error can be distinguished.
Mr. Assistant Attorney General Fowler for appellee and defendant in error:
This court is without jurisdiction for two reasons: First. The judgment of the Court of Appeals is not final within the meaning of § 8 of the act of February 9, 1893, 27 Stat. 436; Code Dist. Col., §233, which specifies what judgments of that court may be reviewed by this court on appeal or writ of error. The manifest purpose of § 9 of the Trade-Mark Act of February 20, 1905, 33 Stat. 727, was to place appeals to the Court of Appeals from decisions of the Commissioner of Patents in proceedings arising under applications for trade-marks, and also the judgments of that court upon such appeals, upon the same footing with such appeals to and judgments thereof in applications for patents. See Frasch v. Moore, 211 U. S. 1, and Gaines v. Knecht, post, p. 561. Second. Because the matter in dispute is of no certain value and there is not drawn in question p. 289“the validity of ... a statute of, or an authority exercised under the United States.”
Mr . Chief Just ice Fuller , after making the foregoing statement, delivered the opinion of the court.
In Frasch v. Moore, 211 U. S. 1, it was held that decisions in the Court of Appeals of the District of Columbia in appeals from the Commissioner of Patents under § 9 of the act of February 9, 1893, c. 74, 27 Stat. 434, were interlocutory and not final, and not reviewable by this court under § 8 of that act, because not final judgments or decrees within the meaning of that section. When certified to the Commissioner of Patents, they “govern the further proceedings in the case,” (Revised Statutes, § 4914), but are not final judgments or decrees at law or in equity within the purview of § 8.
In Gaines & Company v. Knecht & Son, post, p. 561, we applied the same rule to a writ of error to the decision of the Court of Appeals, rendered on appeal to that court from a decision of the Commissioner of Patents in proceedings arising under an application for a trade-mark, contenting ourselves with this memorandum, announced December 14, 1908:
“Writ of error dismissed for want of jurisdiction. Frasch v. Moore, 211 U. S. 1; see Act of February 20, 1905, for the registration of trade-marks, 33 Stat. 724, c. 592, sections 9, 16, 17, 18 et passim.”
Section 9, there referred to, provides:
“That if an applicant for registration of a trade-mark . . . is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the Court of Appeals of the District of Columbia, on complying with the conditions required in case of an appeal from the decision of the Commissioner by an applicant for a patent, or a party to an interference as to an invention, and the same rules of practice and procedure shall govern in every stage of such proceedings as far as the same may be applicable.”
vo l . ccxu—19
Gaines v. Knecht was a case of opposition to the registration of a trade-mark under §§ 6 and 7 of the act of February 20, 1905, the objections being that the act was unconstitutional, and also that the applicant’s mark was so similar to the mark of opponent that it would be likely to lead to confusion, and enable applicant to perpetrate a fraud on the public. The examiner of interferences dismissed the opposition, and from his decision the case was appealed to the Commissioner, who affirmed the decision. An appeal was then taken to the Court of Appeals, and that court affirmed the Commissioner, and “ordered that this decision and the proceedings in this court be certified to the Commissioner of Patents, as required by law.” The court said, among other things, that the appeal was “an appeal from the decision of an officer of the executive department performing a ministerial act. He has treated the statute as valid, and so he ought to have treated it until it is otherwise determined by the courts. ... It may be true that the Commissioner acts in a judicial capacity in determining whether the applicant is the owner of the trade-mark, and whether it is one of those marks the registration of which is prohibited, but when he has determined these in favor of the applicant the act to be performed by him is ministerial merely, and that is the act which it is claimed he should have refused to perform, on the ground that the statute is unconstitutional. Such judicial proceedings as there are issue and culminate in a purely ministerial act—the mere registration of a mark which, if the statute is void, cannot possibly prejudice the right of the opponent or of any one else. It is not as if the culminating act interfered with the person or property of others. We sit to review the action of the officer from the same standpoint which he was bound to take. Although the case is now before a court, the case itself is not changed, nor are the rules changed by which it should be decided. It is for this court to say merely whether his decision was right or wrong. We think he did not err in treating the act as valid. When some case shall arise in which rights of person or property must be affected by the p. 291decision it will become necessary to consider the question now attempted to be raised; but to pass upon it now would be to decide a question of theory alone, and this is not the province of a court.” 27 App. D. C. 530, 532.
In the light of the various details of the act of February 20,. 1905, and of the specific provisions of § 9, we were of opinion that proceedings under the act were governed by the same rules of practice and procedure as in the instance of patents, and the writ of error was accordingly dismissed. The same result must follow in the present case.
Under § 4914 of the Revised Statutes no opinion or decision of the Court of Appeals on appeal from the Commissioner precludes “any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question,” and by § 4915 a remedy by bill in equity is given where a patent is refused, and we regard these provisions as applicable in trade-mark cases under § 9 of the act of February 20, 1905.
Appeal and writ of error dismissed.
LAUREL OIL AND GAS COMPANY v. MORRISON.
app eal fr om the cir cuit cou rt of app eal s fo r the eigh th
CIRCUIT.
Territory to the United States Court of Appeals in the Indian Territory, and from that court to the United States Circuit Court of Appeals for the Eighth Circuit are exclusive; and there is now no appeal or writ of error in such cases from the Circuit Court of Appeals of the Eighth Circuit to this court. Appeal from 154 Fed. Rep. 617, dismissed.
This case on the merits is reported in sub nomine Morrison v. Burnette, 154 Fed. Rep. 617. The able opinion of Sanborn, J., speaking for the Circuit Court of Appeals, is preceded by the following statement, which correctly sets forth the facts:
“Pursuant to an order of the United States Court in the Western District of Indian Territory, which has the jurisdiction of a Probate Court, a lease of 160 acres of mineral land which had been allotted to Edith Durant, a minor Indian, was advertised for sale on sealed bids by Monday Durant, her guardian, and on the day of sale, March 5, 1906, the highest bonus bid for it was $3,490, and this bid was made by Robert W. Morrison, Charles W. S. Cobb, John E. McKinney, William J. Breene and Frank M. Breene, who are now the appellants in this case, and will hereafter be so styled. The Laurel Oil & Gas Company, a corporation, one of the appellees, bid at the same time at this sale $2,850 for this lease. On March 7,1906, the appellants deposited the $3,490 with the court, and on March 9, 1906, the guardian executed the lease of the land to the appellants and they applied to the court for the confirmation of the sale and the approval of the lease. After notice to all parties in interest and a hearing the court on June 11,1906, ‘ordered, adjudged and decreed that the lease executed by Monday Durant, guardian of Edith Durant, minor, on the ninth day of March, 1906, (to the appellants,) be, and the same is hereby in all things approved, ratified and confirmed.’ On the next day the Laurel Company, the unsuccessful bidder at the former sale, made a motion for leave to bid again for the lease of this land, and offered to bid a bonus of $8,000. Thereupon the court set aside the order of June 11,1906, for the sole reason that a higher bonus could be obtained, and on June 14, p. 2931906, it sold a lease of 80 acres of this land on the same terms as the former to the Galbraith Oil & Gas Company for a bonus of $16,800 and a lease of the other eighty acres on the same terms to the Laurel Oil & Gas Company for $2,000. The leases to these parties were subsequently made by the guardian and the court confirmed these sales and approved these leases. The appellants then sued out a writ of error from the Court of Appeals of the Indian Territory to reverse the order which set aside the decree of confirmation of the sale and of approval of the lease to them, and they also appealed from that order. The Court of Appeals of the Indian Territory consolidated the two cases, heard them as an appeal in equity and affirmed the order below because the court was evenly divided in opinion. The appellants have brought the latter judgment here by writ of error and also by appeal.
“Since the case came to this court the controversy over the eighty acres leased to the Galbraith Oil & Gas Company has been settled and the only dispute remaining relates to the eighty acres leased to the Laurel Oil & Gas Company under the second lease.”
The question in the case was whether a court of equity during the term at which the confirmation is made may lawfully avoid an executed judicial sale which it has confirmed, on the sole ground that a larger price may be obtained by a second sale, and was answered in the negative, and the decree was that the decree of the United States Court of Appeals in the Indian Territory and the decree of the United States court for the Western District of the Indian Territory be reversed, and that “this cause be, and the same is hereby, remanded to the United States Court for the Western District of the Indian Territory, with directions to confirm and enforce its order and decree which confirmed the sale and approved the lease to the appellants [appellees here], and to take any further proceedings necessary to that end.” This decree was made and entered July 10,1907. An appeal was thereupon allowed to this court, where the record was filed October 31 of that year.
Mr. George A. Murphey, with whom Mr. William T. Hutchings and Mr. Wm. P. Z. German were on the brief, for appellant.
Mr. William J. Breene and Mr. John J. Shea, with whom Mr. Edmond C. Breene was on the brief, for appellees.
Mr . Chief Just ice Fuller , after making the foregoing statement, delivered the opinion of the court.
By the act of Congress, approved March 1, 1889, c. 333, 25 Stat. 783, there was established a United States court for the Indian Territory. The act conferred no jurisdiction over felonies, but by the fifth section exclusive original jurisdiction was conferred over all offenses against the laws of the United States committed within the Indian Territory, not punishable by death or by imprisonment at hard labor. Jurisdiction was conferred in all civil cases between citizens of the United States who are residents of the Indian Territory where the value of the thing in controversy amounted to one hundred dollars or more. The final judgment or decree of the court, where the value of the matter in dispute, exclusive of costs, exceeded one thousand dollars, might be reviewed and reversed or affirmed in the Supreme Court of the United States upon writ of error or appeal, in the same manner and under the same regulations as the final judgments and decrees of a Circuit Court.
By section five of the Judiciary Act of March 3,1891, c. 517, 26 Stat. 826, as amended, appeals or writs of error might be taken from the District and Circuit Courts directly to this court in cases in which the jurisdiction of the court was in issue; of conviction of a capital crime; involving the construction or application of the Constitution of the United States; and in which the constitutionality of any law of the United States, or the validity or construction of any treaty made under its authority, was drawn in question.
By section six, the Circuit Courts of Appeals established by the act were invested with appellate jurisdiction in all other cases.
The thirteenth section read: “Appeals and writs of error may be taken and prosecuted from the decisions of the United States Court in the Indian Territory to the Supreme Court of the United States, or to the Circuit Court of Appeals in the Eighth Circuit, in the same manner and under the same regulations as from the Circuit or District Courts of the United States, under this act.”
The act of March 1, 1895, c. 145, 28 Stat. 693, provided for the appointment of additional judges of the United States court in the Indian Territory, and created a Court of Appeals with such superintending control over the courts in the Indian Territory as the Supreme Court of Arkansas possessed over the courts of that State by the laws thereof; and the act also provided, § 11, that “writs of error and appeals from the final decisions of said appellate court shall be allowed, and may be taken to the Circuit Court of Appeals for the Eighth Judicial Circuit in the same manner and under the same regulations as appeals are taken from the Circuit Courts of the United States,” which thus in terms deprived that court of jurisdiction of appeals from the Indian Territory trial court, under § 13 of the act of 1891.
In Harless v. United States, 88 Fed. Rep. 97, the Circuit Court of Appeals for the Eighth Circuit, in a careful opinion by District Judge Shiras, held that in the act of March 1,1895, creating the Court of Appeals for the Indian Territory and giving it full jurisdiction, civil and criminal, the provision of § 11, that “writs of error and appeals from the final decisions of said appellate court shall be allowed and may be taken to the Circuit Court of Appeals for the Eighth Judicial Circuit in the same manner and under the same regulations as appeals are taken from the Circuit Courts of the United States,” conferred upon that court full appellate jurisdiction over the final decisions of the territorial appellate court, which jurisdiction was not in any way measured or limited by the jurisdiction on p. 296appeal from or error to the District or Circuit Courts. And we concur in that view.
The rule was laid down by this court in Brown v. United States, 171 U. S. 631, that where a statute provides for a writ of error to a specific court of appeals it must be regarded as a repeal of any previous statute which provided for a writ of error to another and different court, and that the decisions of the Court of Appeals of the United States for the Indian Territory are final, except so far as they are made subject to review by some express provision of law. It was furthermore there ruled that the Court of Appeals in the Indian Territory was analogous to the Supreme Court of the District of Columbia, and bore the same relation to the trial court in the Indian Territory as the Supreme Court of the District of Columbia bore to the trial court in the District, and Ex parte Bigelow, 113 U. S. 328; In re Heath, 144 U. S. 92; Cross v. Burke, HQ U. S. 82, 84, were cited to the point that no appeal could be taken from or writ of error sued out to the Supreme Court of the District of Columbia where not specifically provided for.
Section 12 of the act of March 3,1905, 33 Stat. 1081, c. 1479, in force when the proceedings in the present case were had, provides:
“That hereafter all appeals and writs of error shall be taken from the United States courts in the Indian Territory to the United States Court of Appeals in the Indian Territory, and from the United States Court of Appeals in the Indian Territory to the United States Circuit Court of Appeals for the Eighth Circuit in the same manner as is now provided for in cases taken by appeal or writ of error from the Circuit Courts of the United States to the Circuit Court of Appeals of the United States for the Eighth Circuit.”
We find no statute giving an appeal from that Circuit Court of Appeals to this court, and perceive no reason for concluding that Congress intended that parties in such cases should be entitled to three appeals.
Appeal dismissed.