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TRADEMARK CASES, 100 U. S. 82 (1879)
U.S. Supreme Court
Trademark Cases, 100 U.S. 82 (1879)
100 U.S. 82
1. Property in trademarks has long been recognized and protected by the common law and by the statutes of the several states, and does not derive its existence from the act of Congress providing for the registration of them in the Patent Office.
2. A trademark is neither an invention, a discovery, nor a writing within the meaning of the eighth clause of the eighth section of the first article of the Constitution, which confers on Congress power to secure for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
3. If an act of Congress can in any case be extended, as a regulation of commerce, to trademarks, it must be limited to their use in "commerce with foreign nations, and among the several states, and with the Indian tribes."
4. The legislation of Congress in regard to trademarks is not, in its terms or essential character, a regulation thus limited, but in its language embraces, and was intended to embrace, all commerce, including that between citizens of the same state.
5. That legislation is void for want of constitutional authority, inasmuch as it is so framed that its provisions are applicable to all commerce, and cannot be confined to that which is subject to the control of Congress.
The first two cases were brought here on certificates of division in opinion between the judges of the Circuit Court of the United States for the Southern District of New York. The last was brought here on a certificate of division on opinion between the judges of the Circuit Court of the United States for the Southern District of Ohio.
Steffens was indicted under the fourth and fifth sections of an act of Congress entitled "An Act to punish the counterfeiting of trademarks and the sale or dealing in of counterfeit trademark goods," approved Aug. 14, 1876, 19 Stat. 141.
The first count in the indictment charges him with knowingly and willfully having in his possession counterfeits and colorable imitations of the trademarks of G. H. Mumm & Co., of Rheims, France, manufacturers and sellers of champagne wine.
The second count charges him with knowingly and willfully selling counterfeited representations and colorable imitations of the trademark of said G. H. Mumm & Co.
Wittemann was indicted under the fifth section of that act. The indictment consists of six counts, and they charge: 1st, the counterfeiting and forging; 2d, the having in possession colorable imitations of; 3d, the buying; 4th, the selling; 5th, the offering for sale; and, 6th, the dealing in colorable imitations of the private trademark belonging to and used by the firm of Kunkleman & Co., of Rheims, France, manufacturers and dealers in wine known as the "Piper Heidsick" brand of champagne wine.
Johnson, McNamara, and Reeder were prosecuted under that act by a criminal information containing seven counts, of which the first, fourth, and sixth are founded upon a trademark consisting of the letters "O K," registered in the United States Patent Office by Charles F. O'Donnell, April 2, 1878, for use upon packages of whiskey, and respectively charge the defendants with counterfeiting, affixing a colorable imitation, and dealing in and selling packages of whiskey to which was attached a colorable imitation of said trademark; and the second, third, fifth, and seventh counts are founded upon another trademark, consisting of a seal and ribbon, the latter secured by the seal of a package containing whiskey, registered by Charles F. O'Donnell, May 21, 1878, and respectively charge the defendants with counterfeiting, making a colorable imitation, affixing a colorable imitation, and dealing in packages of whiskey to which was attached a colorable imitation of said trademark.
Secs. 4 and 5 of the act of 1876 are as follows:
"SEC. 4. That any person or persons who shall, with intent to defraud any person or persons, knowingly and willfully cast, engrave, or manufacture, or have in his, her, or their possession, or buy, sell, offer for sale, or deal in, any die or dies, plate or plates, brand or brands, engraving or engravings, on wood, stone, metal, or other substance, moulds, or any false representation, likeness, copy, or colorable imitation of any die, plate, brand, engraving, or mould of any private label, brand, stamp, wrapper, engraving on paper or other substance, or trademark, registered pursuant to the statutes of the United States, shall, upon conviction thereof, be punished as prescribed in the first section of this act."
"SEC. 5. That any person or persons who shall, with intent to defraud any person or persons, knowingly and willfully make,
forge, or counterfeit, or have in his, her, or their possession, or buy, sell, offer for sale, or deal in, any representation, likeness, similitude, copy, or colorable imitation of any private label, brand, stamp, wrapper, engraving, mould, or trademark, registered pursuant to the Statutes of the United States, shall, upon conviction thereof, be punished as prescribed in the first section of this act."
Sect. 4937, Rev. Stat., is as follows:
"Any person or firm domiciled in the United States, and any corporation created by the authority of the United States, or of any state or territory thereof, and any person, firm, or corporation resident of or located in any foreign country which by treaty or convention affords similar privileges to citizens of the United States, and who are entitled to the exclusive use of any lawful trademark, or who intend to adopt and use any trademark for exclusive use within the United States, may obtain protection for such lawful trademark, by complying with the following requirements:"
"First, by causing to be recorded in the Patent Office a statement specifying the names of the parties, and their residences and places of business, who desire the protection of the trademark; the class of merchandise, and the particular description of goods comprised in such class, by which the trademark has been or is intended to be appropriated; a description of the trademark itself, with facsimiles thereof, showing the mode in which it has been or is intended to be applied and used; and the length of time, if any, during which the trademark has been in use."
"Second, by making payment of a fee of twenty-five dollars in the same manner and for the same purpose as the fee required for patents."
"Third, by complying with such regulations as may be prescribed by the Commissioner of Patents."
To each indictment there was a general demurrer. The judges of the circuit court were opposed in opinion upon the following question:
"Can the Act of Congress approved Aug. 14, 1876, entitled 'An Act to punish the counterfeiting of trademark goods and the sale or dealing in of counterfeit trademark goods,' under which this indictment is found, be upheld, wholly or in part, as a law necessary and proper for carrying into execution any of the powers vested in the Congress by the Constitution of the United States? "
To the information against Johnson, McNamara, and Reeder there was a general demurrer, and thereupon a question arose for decision whether the said act of Congress "is within the constitutional power of Congress, or whether the same is unconstitutional, null, and void," and the opinions of the judges of the Circuit Court were opposed.
The Attorney-General for the United States.
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