The right to a trademark can not be "limited to any place, city or state and therefore must be deemed to extend everywhere." 48 The fact that a corporation owning a trademark fails to comply with the foreign corporation law of a state is no justification for infringement by another within such state, and, more broadly stated, "the fact that complainant has not up to this time (i. e. of the suit) extended its trade to the locality occupied by the respondent," is no defense to a charge of trademark infringement.50 49 The courts of the United States, and those of the several states, are open to the owners of trademarks of whatever citizenship or nationality who may seek to protect their trademarks against piracy.51 The act of congress of 1881 provided for the registration of trademarks owned by aliens located "in any foreign country, or tribe, which, by treaty, convention or law, affords similar privileges to citizens of the United States" (Act of 1881, sec. 1), and substantially the same provision is contained in the Act of 1905, sec. 1. The acquisition of a valid trademark in any place carries with it the right to use the mark everywhere.52 This is subject to the exception that a foreigner doing business in his own country under the trademark has no common law right to that trademark in 48-Kidd v. Johnson, 100 U. S. 619; 25 L. Ed. 769; followed in Consolidated Ice Co. v. Hygeia Distilled Water Co., 80 C. C. A. 506; 151 Fed. Rep. 10, 12. 49-Consolidated Ice Co. v. Hygeia Distilled Water Co., 89 C. C. A. 506; 151 Fed. Rep. 10, 12. 50-Hygeia Distilled Water Co. v. Consolidated Ice Co., 144 Fed. Rep. 139, 142. 51-State v. Gibbs, 56 Mo. 133; Taylor v. Carpenter (1), 3 Story, 458; Cox, 14; Seb. 78; Coats v. Holbrook, 2 Sardf. 586; Cox, 20; Seb. 79, Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32; 9 L. T. 514; Seb. 83; Taylor v. Carpenter (3), 2 Sandf. 603; 11 Paige, 292; Cox, 45; Seb. 84: Lemoine v. Ganton, 2 E. D. Smith, 343; Cox, 142; Seb. 125; Derringer v. Plate, 29 Cal. 292; Cox, 324; Seb. 249; Col lins Co. v. Brown, 3 K. & J. 423; 2 Jur. N. S. 929; 30 L. T. 62; Seb. 151; Collins Co. v. Cohen, 3 K. & J. 428; 3 Jur. N. S. 929; 29 L. T. 245; 30 L. T. 62; 5 W. R. 676; Seb. 152; Collins Co. v. Reeves, 28 L. J. Ch. 56; 4 Jur. N. S. 865; 33 L. T. 101; 6 W. R. 717; Seb. 164; Collins Co. v. Walker, 7 W. R. 22; Seb. 171; Atlas Assur. Co. v. Atlas Ins. Co., 138 Iowa, 228; 112 N. W. Rep. 232. 52-Except that an alien who abandons his trademark in this country is not revested with the right to use it, by the force of subsequent legislation in his own country. Saxlehner v. Eisner & Mendelson Co., 91 Fed. Rep. 536, 539; Saxlehner v. Eisner & Mendelson Co. (2), 179 U. S. 19, 36; 45 L. Ed. 60. the United States, as against a domestic firm which has established business under a similar trademark, adopted in good faith, before the alien had sold any goods in this country.5: 53 In a recent case, an assignment of a trademark limited to certain specified states has been sustained and an infringer enjoined as to those states. The doctrine of this section was not invoked, however, as far as the opinion discloses.54 As to a corporate name, the injunction has been limited in its. operation, to exclude a defendant from doing business in the state of New York.55 In a case involving the use of the word "Lilliputian" in a mail-order business, a Chicago defendant was enjoined at the instance of a New York complainant because of the occupancy by each through the mails of a common business territory.56 The right of property in a trademark is a unique right. The question of the extent of territory in which its owner will be afforded relief in equity against an infringer, must have its answer based upon the fundamental weaknesses attaching to trademarks as property. To understand how, in many cases, relief may be denied to the owner, requires that it be kept in mind, as Lord Parker, of Waddington, has recently said, in the House of Lords, that "even in the case of what are sometimes referred to as Common-Law Trademarks the property, if any, of the so-called owner is in its nature transitory, and only exists so long as the mark is distinctive of his goods in the eyes of the public or a class of the public." 57 If this is true as to the duration of the life of the trademark right, it is equally true of the birth of that right. Possibly it will not do, in view of the public interest, to permit the mere local user of a trademark to enjoin its use by another who has adopted the same or substantially the same mark in good faith in another locality where consumers have But no knowledge or means of knowledge of the prior use. we are dangerously close to the border-land of doubt when we attempt to define precisely what the small, local user of a trademark does acquire by that limited and meager use, considered as a matter of pure legal right.5 58 There are, as Judge Denison has put it, "two conflicting theories of trademark origin and right, * # and we speak now only of marks which are so-called 'technical' trademarks. One theory is that the right arises from adoption, * from a kind of creation or discovery followed by appropriation. Whether the right is perfect at the instant of adoption, or whether there first must be sufficient use upon the goods to create for the mark a meaning among that part of the public which begins to purchase, is a detail which would not usually be important. According to this theory, if the right is once acquired by prior adoption, it is by its very nature exclusive of all later similar rights which might otherwise be acquired by similar adoption; and from that theory it would seem to follow that one who first adopts the mark and applies it to his goods in interstate commerce, and who extends his business into new localities, until, in regular course, his business may cover the country, may prevent the use of the mark by another later user, even though that other has adopted the mark in good faith, and in his particular field has given it identity with his goods. How much diligence on this theory the first user must employ in extending his business to get the full benefit of his initial right need not now be considered. The other theory is that no right is perfected until the mark has been used to such an extent that it has come to have a meaning to the particular purchasing public as to which a controversy arises, and that the duty of the courts of equity to enforce such rights depends essentially upon the duty of protecting this public against being misled. From this theory it will follow, or it may follow, that the later adopter, who has brought it about 58-That a trademark is not property as such until it has become associated with and forms part of the business in which it is employed, and that a naked license to use a trademark is, therefore, void, see Detroit Creamery Co. v. Velvet Brand Ice Cream Co. (Mich.), 153 N. W. Rep. 664. in a given locality that the mark indicates to the public that the goods are of his manufacture may thereby himself acquire a trademark right or its equivalent, affirmatively enforceable in that locality and among that public, even against the first proprietor.'' This latter theory has now received the sanction of the United States Supreme Court, which has declared that "where two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant; unless, at least, it appear that the second adopter has selected the mark with some design inimical to the interests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like. ''60 The danger of the doctrine thus announced is manifest, its practical application will be interesting to observe. When a California dealer appropriates the mark of a New York dealer, who is to determine, and by what proof, whether the act was done "to forestall the extension" of the first user's trade? Under the rule so stated, the only safety for the adopter of a trademark in the United States, is to immediately occupy every market in the country, an operation calling for an immense expenditure, and impossible to any but the vastly wealthy corporations which are the target for our anti-trust laws. "The entire argument for the petitioner is summed up in the contention that whenever the first user of a trademark has been reasonably diligent in extending the territory of his trade, and as a result of such extension has in good faith come into competition with a later user of the same mark, who in equal good faith has extended his trade locally before invasion of his field by the first user, so that finally it comes to pass that the rival traders are offering competitive merchandise in a common market under the same trademark the later user should be enjoined at the suit of the prior adopter, even though the latter be the last to enter the competitive field and the former have already established a trade there. "The asserted doctrine is based upon the fundamental error of supposing that a trademark right is a right in gross or at large, like a statutory copyright or a patent for an invention, to either of which, in truth, it has little or no analogy. Canal Co. v. Clark, 13 Wall. 311, 322 [20 L. Ed. 581]; McLean v. Flem 59-W. A. Gaines & Co. v. Rock Spring Distilling Co., 226 Fed. Rep. 538; 141 C. C. A. 287, 294; reversed in Rock Spring Distilling Co. v. W. A. Gaines & Co., 246 U. S. 312; 62 60-Mr. Justice Pitney, in Hanover Star Milling Co. v. Metcalf, 240 U. S. 403; 60 L. Ed. 713. ing, 96 U. S. 245, 254 [24 L. Ed. 828]. There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed. The law of trademarks is but a part of the broader law of unfair competition; the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his; and it is not the subject of property except in connection with an existing business. Hanover Milling Co. v. Metcalf, 240 U. S. 403, 412-414 [36 Sup. Ct. 357, 60 L. Ed. 713]. "The owner of a trademark may not, like the proprietor of a patented invention, make a negative and merely prohibitive use of it as a monopoly. See United States v. Bell Telephone Co., 167 U. S. 224, 250 [17 Sup. Ct. 809, 42 L. Ed. 144]; Bement v. National Harrow Co., 186 U. S. 70, 90 [22 Sup. Ct. 747, 46 L. Ed. 1058]; Paper Bag Patent Case, 210 U. S. 405, 424 [28 Sup. Ct. 748, 52 L. Ed. 1122]. "In truth, a trademark confers no monopoly whatever in a proper sense, but is merely a convenient means for facilitating the protection of one's good will in trade by placing a distinguishing mark or symbol-a commercial signature-upon the merchandise or the package in which it is sold. "It results that the adoption of a trademark does not, at least in the absence of some valid legislation enacted for the purpose, project the right of protection in advance of the extension of the trade, or operate as a claim of territorial rights over areas into which it thereafter may be deemed desirable to extend the trade. ''60 This doctrine has no bearing upon the right to register under the Federal Statutes, under which "the person first to adopt and use the mark" has the right to register.6ob Territorial limitation of trade name.-The doctrine just considered in application to trademarks has been thus applied to tradenames. "The plaintiff is entitled to relief only on the ground of unfair trade competition or interference with his established rights. The tradename and symbols of the plaintiff can not extend into regions where his goods are not sold, where he has no customers, and where he has no trade. There can be no recovery unless it appears that there has been a wrongful 60a-Mr. Justice Pitney, in United Drug Co. v. Rectanus Co., 248 U. S. 90, 98; 63 L. Ed. 141, 146; followed in Ammon & Person v. Narragansett Dairy Co., 262 Fed. Rep. 880; C. C. A. 1; General Baking Co. v. Gorman, 295 Fed. Rep. 168, 171. 60b-H. Kuhn & Sons v. Lett, 285 Fed. Rep. 970, C. A. D. C. |