United States ex rel. Wilcox & Gibbs Sewing Machine Co. v. Marble

delivered the opinion of the court.

‘ The relator claims the right to have its label registered' in the Patent Office, as a label designed to be used on an article of manufacture, under the act of June 18, 1874. In order to ascertain the intent of that act it will be necessary to refer to the statutory provisions relating to the same-matter existing at the time of its passage.

Section 4937 of the Revised Statutes provided as follows r

“ Any person domiciled in the United States * * * who intends to adopt and use any trade-mark for exclusive use within the United States, may obtain protection for such lawful trade-mark by complying with the following requirements : First. By causing to be recorded in the Patent Office a statement specifying the names of the parties * * * who desire the protection of the trade-mark ; the class of merchandise, and the particular description of goods comprised in such class, by which the trade-mark has been or is intended to be appropriated; a description of the trademark itself, with fac-similes thereof, showing the manner in which it has been or is intended to be applied or used, and the length of time, if any, during which the trade-mark has been in use. Second. By making payment of a fee of twenty-five dollars,” &c.

Section 4939 excluded from the class of registrable- trademarks any mark which was merely the name of a person, un*291accompanied by a mark sufficient to distinguish it from the same name when used by other persons.

The sections applied to trade-marks which were in the form of labels bearing distinguishing marks.

It was at the same time provided .by section 4952 that—

“Any citizen of the United States, or resident therein, who shall be the author, * * * designer, or proprietor of any * * * engraving, cut, print, &c., shall, upon complying with the provisions of this chapter, have the sole liberty of printing, * * * publishing * * and vending the same.”

Sections 4956 and 4957 contain the provisions referred to, namely, for the deposit of copies and the recording of a description of such engraving, cut or print in the office of the Librarian of Congress. As the application of these sections did not depend upon the importance of the print, they, of course, included prints which were to b& used merely as labels.

It-is plain that these contemporaneous provisions relating to trade-marks and prints, authorized any person who owned a label bearing distinguishing marks to have it recorded in the Patent Office as a trade-mark, or, if he preferred to do so, to have it registered in the office of the Librarian of Congress as a mere print. It must bear such distinguishing marks in order to be admitted to record as a trade-mark ; but the fact of bearing them did not exclude it from registry as a print. The Librarian of Congress had no discretion to refuse to recognize it as a print, because it could be recognized by the Commissioner of Patents as a trade-mark. Whether it should be treated as the one or the other, depended wholly on the will of its proprietor. It was for him to determine whether he would adopt it as his trade-mark, and whether he would make the declarations necessary to that end.

When the registering of such prints as were designed to be used as labels on manufactures was transferred from the office of the Librarian of Congress to the Patent Office, by the act of 18th of June, 1874, was this choice of the owner *292of the label as to the character which it should have, and the purposes which it should serve, taken away?

The first action of that act provides that ño person shall maintain an action for the infringement of his copyright of any book, “ print, cut, engraving,” &c., unless he shall give notice thereof by inscribing upon some visible portion of ■such book, prints, engraving, certain words. The third section provides : “ That in the construction of this act, the words ‘engraving,’ £ cut,’and ‘ print,’shall be applied only to pictorial illustrations or works connected with the fine arts. And no prints or labels designed to be used for any other article of manufacture shall be entered under the copyright law, but may be registered in the Patent Office. And the Commissioner of Patents is hereby charged with the supervision and control of the entry or registry of such prints or labels, in conformity with the regulations provided by law as to copyright of prints ; except that there shall be paid for recording the title of any print or label not a trademark, six dollars, which shall cover the expense of furnishing a copy of the record under the seal- of the Commissioner of Patents, to the party entering the same.”

After the passage of this act the Commissioner of Patents was charged with two distinct duties relating to labels. If any person, intending to adopt a particular label as his trade-mark, desired to obtain protection for it, the Commissioner was bound, provided it bore the necessary distinguishing marks, to cause to be recorded the statement of the owner specifying the facts prescribed by the statute. He was now required to register also labels which were not trade-marks. But was he clothed with power to control the entry of labels so far as to determine that a label which, by reason of its distinguishing marks, might have been entered as a trade-mark, should not be admitted to registry as ££ a label not a trade-mark?” The only reference to any control to be exercised by him, is found in the clause which provides that he shall have “ control of the entry or registry of such prints or labels, in conformity with the regulations provided by law as to copyright prints.” But this is merely the same control which has been exer*293cised over the registering of these labels, as copyright prints, by the Librarian of Congress by authority of section 4948 of the Ee vised Statutes, and in conformity with the regulations found in sections 4956 and 4957 ; and such control did not, as we have already said, include authority to exclude from the registry any particular print on the ground that it should more properly be entered at the Patent Office as a trade-mark. Of course, then, when this control over the registry of the same prints, now called “labels which are not trade-marks,” was transferred to the Commissioner of Patents, it had only the same limited application, and did not include any discretion to determine whether a particular label should be classed as a trade-mark or as a label only. Congress had intended to take away from the owner of a label his former right to determine what use he should make of it, and how he would have it entered, that intention would have been plainly expressed. The actual intention was merely to change the place of registry. When an applicant for registry complies with all the requirements of the lawful regulations, as the relator appears to have done, the function of the Commissioner is merely ministerial. The peremptory writ will issue accordingly.