THE DECISIONS OF THE Supreme Court of the United States AT OCTOBER TERM, 1901. [1]*HOLZAPFEL'S COMPOSITIONS COM-missed a bill to restrain the use of an al PANY (Limited), Petitioner, v. leged trademark. Reversed. See same case below, 41 C. C. A. 329, 101 RAHTJEN'S AMERICAN COMPOSITION Fed. 257. COMPANY, Respondent. (See S. C. Reporter's ed. 1-18.) Trademarks use of word "patent"-right to use name after patent expires. 1. No right to a trademark which includes the word "patent" and which describes the artiele 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. 2. The right to use the word "patent" as part of the name of an article for which a patent has been obtained ceases on the expiration of the patent. 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 aame by which it is possible to describe it. [No. 54.] Statement by Mr. Justice Peckham: The respondent, a New York corporation, commenced this suit in equity in the circuit court for the southern district of *New York, [2] against the petitioner, which is a foreign corporation organized under the laws of the Kingdom of Great Britain and having a place of business in the city of New York, to restrain it from the use of the trademark which the respondent averred it had ac quired in the name "Rahtjen's Composition," and to obtain an accounting of the profits and income which the petitioner had unlawfully derived from the use of such trademark, and which it had by reason thereof diverted from the respondent. Issue was taken on the various allegations in the bill, and upon the trial the circuit court dismissed the same (97 Fed. 949), but upon appeal to the circuit court of appeals the decree of the circuit court was reversed and the case remanded to that court, with instructions to enter a decree enjoining the petitioner from selling or offering to sell Rahtjen's Composition under that name, Argued April 25, 26, 1901. Decided Octo- and from using the name upon its packages ber 21, 1901. or in its advertisements. 41 C. C. A. 329, ON Judge Wallace dissented from the judgment and opinion of the circuit court of ap. peals, holding that the case was properly decided in the court below, and that the de 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 infringe- | Dr. S. A. Richmond Nervine Co. v. Richmond, 40 ment-see notes to Raymond v. Royal Baking L. ed. U. S. 155: Coats v. Merrick Thread Co 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. 37 L. ed. U. S. 847; and Lawrence Mfg. Co.. Tennessee Mfg. Co. 34 L. ed. U. S. 997. 4 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. They first shipped some of the paint manu[3]factured by them in Germany *to the United States in 1870, consigned to Henry Gelien. They did not put it upon the market by sending generally to those who might wish to use it, but all their consignments from 1870 to 1878 were made to Gelien. Under what marks he sold the article does not appear. position, Hartmann's Manufacture." Up to the time of the above assignment the Rahtjens had consigned their paint to New York in barrels or casks addressed to Gelien, and with labels affixed thereon, in which the article *was described as "Rahtjen's Patent [4] Composition;" and after Hartmann, La Doux, & Maecker became agents, the casks were addressed to that firm at New York, and labeled the same way. 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. After the assignment to Suter, Hartmann, & Co. of the exclusive right of sale in the United States, and up to the year 1883, that firm sent the paints to the United States under the description of "Rahtjen's Patent Composition," and the Rahtjens themselves sent no more paint to the United States from Germany. 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, 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 he should at the end of seven years pay a America, nor applied for one in the United States, as there was no danger in introdue- stamp duty of £100, and in case he did not ing the composition in America, the inven- pay, the patent was to "cease, determine, tion not being of a nature facilitating good for seven years, or until November 29, 1880, 'imitations. The father died in 1873, after and then ceased because of the failure to which the sons continued the business. Gelien was succeeded as the consignee of the paint in the United States, in 1878, by the firm of Hartmann, La Doux, & Maecker, to whom for a short time the paint was consigned from Germany, and then it was sent them from England through Rahtjen's assigns there. The Hartmann firm was succeeded in July, 1886, by Emil Maecker, as agent for the sale of the paint in the United States, and on January 1, 1889, Maecker was succeeded by one Otto L. Petersen, and in 1891 Petersen was succeeded by the respondent corporation, and was made its president. and become void." It remained in existence pay the £100 stamp duty as provided for in the patent. The label used by Suter, Hartmann, & Co. in sending the paint to their different agents and customers contained the words "Rahtjen's Patent Composition" and "None genuine without this signature, Suter, Hartmann, & Co." These words were used by them from the outset of their career as consignees for the composition. 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 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 *On June 25, 1883, John Rahtjen filed with [5] States of North America, for the period of the English office an application for registwelve years from the commencement of tration as a trademark of the words "Genu 1878 to the end of 1889." After 1870 the ine Rahtjen's Composition for Ships' Botfirm of Hartmann Brothers, or Suter, Hart- toms," &c. This application was opposed mann, & Co., manufactured the composition by Holzapfel & Co., through their solicitors, for themselves in England, by the license of and no counter statement having been filed the Rahtjens, and for time after 1874 by Rahtjen the application was deemed to Rabtjen also manufactured in England as be withdrawn. well as in Germany. During this time the On July 7, 1883, Rahtjen filed another apcomposition when manufactured by Hart-plication for registration of the words mart was marked "Rahtjen's Patent Com- "Rahtjen Composition." This, too, was op a 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 de fendant has ever in any way imitated or infringed upon it. On January 9, 1884, Suter, Hartmann, & Co. filed an application for the registration of the words "Rahtjen's Patent Composition for Ships' Bottoms, Buoys, &c. Directions. Suter, Hartmann, & Co." In their application for registration they said: "We do not claim the exclusive use of the words 'Raht [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, FOR SHIPS' BOTTOMS, BUOYS, &c. Directions. SUTER, HARTMANN & Co. in England the exclusive right to manufacture it there, and so in their manufacture it was described as "Rahtjen's Composition. Hartmann Brothers' Manufacture." was In 1888 Suter, Hartmann, & Rahtjen's Composition Company (Limited) 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 English 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 the defendant had not acquired the right to use the name in such a way as to cause the public to believe that his product was the product of Rahtjen or of his delegates. The defendant was therefore condemned in judgment and enjoined from the use of the words in future. An appeal was taken from this decision and the court above reversed the judgment, holding that the name "Rahtjen's Composition" had become the property of the public, which had the right to "offer it for sale under the name generally used to describe it, because any other name would completely mislead the purchaser, always supposing that the public is not to be led astray as to the individuality of the manufacturer, or as to the source of the said products. As it is shown by the documents deposited in the present process that the varnish invented by the associate is generally known in England and in Belgium under the name of Rahtjen's Composition, so that in the eyes of the public this name of Rahtjen has become a sort of qualifying adjective indicative of this special product; as the appellant has always in his sign and in his circulars been careful to announce that the product that he sells was manufactured by the 'London Oil & Colour Company,' "the court held that the intention of bad faith which constitutes an element necessary to the establishment of breach of faith had no actual existence, and the judgment was therefore reversed. 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. Complaint had also been made by Mr. Before the assignment to Suter, Hart- John Rahtjen in the court at Hamburg mann, & Co. of the exclusive right to sell against Holzapfel and others for the wrongthe composition in the United States, Raht- | ful use of the words "Rahtjen's Compojen had transferred to Hartmann Brothers sition," and that court held in substance 183 U. S. 51 UNIVERSITY OF ILLINOIS LIBRARY that there was no longer any exclusive prop-ed. 776, 11 Sup. Ct. Rep. 178; Hammond v. erty in the words used, and that the defend- Messrs. William McAdoo and John G. a 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. 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: name is subsequently adopted and applied geographically. 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; Singer Mfg. Co. v. Stanage, 6 Fed. 279; Singer Mfg. Co. v. Larsen, 8 Biss. 151, Fed. Cas. No. A trademark, or a name originally adopt12,902; Ex parte Yale & T. Mfg. Co. 81 Off. ed and used as a trademark, does not beGaz. 801; Fairbanks v. Jacobus, 14 Blatchf, come public property merely because the 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. Day, 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. 557, 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, inant, surely cannot have a trademark in 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 LL. 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. 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 a 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. Kathreiner's Malzkaffee, etc. v. Pastor Kneipp Medicine Co. 27 C. C. A. 351, 53 U. S. App. 425, 82 Fed. 321; Hall v. Barrows, 32 L. J. Ch. N. S. 548. In the registration of trademarks it is immaterial whether the registrant can become the exclusive owner of the trademark abroad. Eæ 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. Menendez v. Holt, 128 U. S. 514, 32 L. ed. 526. 9 Sup. Ct. Rep. 143. 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. Co. 78 Fed. 365; Williams v. Rome, W. & O. 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. V. 423; Williams v. New York C. R. Co. 16 N. Y. 97, 69 Am. Dec. 651; 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 Medicine Co. 27 C. C. A. 351, 53 U. S. App. 425, 82 Fed. 321; J. & P. Baltz Brewing Co. v. Kaiserbrauerei, B. & Co. 20 C. C. A. 402, 39 U. S. App. 229, 74 Fed. 222; Richter v. Reynolds, 8 C. C. A. 220, 17 U. S. App. 427, 59 Fed. 580; La Republique Francaise v. Saratoga Vichy Springs Co. 46 C. C. A. 418, 107 Fed. 459. *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 composition. 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 de 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 Medicine Co. v. Wood, 108 U. S. 218, 225, 27 L. ed. 706, 708, 2 Sup. Ct. Rep. 436; Allan B. Wrisley Co. v. Iowa Soap Co. 104 Fed. 548. 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 |