An interference in fact exists where the marks are so similar as to be calculated to deceive the public, and are used upon classes of goods so closely related that when bearing the same mark one would suppose that they are the product of the same manufacturer.38

Cancellation.-Section 13 of the Act of 1905 provides "That where any person shall deem himself injured by the registration of a trademark in the patent office he may at any time apply to the Commissioner of Patents to cancel the registration thereof." This provision applies only to registrations under the Act of 1905.39 The petition for cancellation must show that the petitioner has been injured.40 The patent office has no authority to cancel a certificate of registration except under section 13.41

Cancellation by bill in equity.-A decree canceling defendant's registration as applied to certain goods has been granted in connection with an injunction against the use of the mark.41a Oppositions.-Section 6, Act of 1905, provides that any person who believes he would be damaged by the registration of a mark may oppose that registration. Section 7 provides for notice to the applicant. The notice of opposition must allege facts showing an interest on the part of the opposer from which damage may be inferred.42 The applicant may plead 3 or demur " to the notice of opposition.

38-B. A. Corbin & Son v. Miller, Kohlhepp, Griese & Co., 98 Off. Gaz. 1435.

39-Funke v. Baldwin, 127 OT. Gaz. 392.

40 E. McIlhenny's Sons v. New Iberia Co., 133 Off. Gaz. 995.

41-Case v. Quirt, 136 Off. Gaz. 1531. For practice in cancellation proceedings see notes, § 13, Act of 1905, Appendix E, post.

44

41a-Waldes v. International Mfrs. Agency, 237 Fed. Rep. 502.

42-Underwood Typewriter Co. v. A. B. Dick Co., 163 Off. Gaz. 730. 43-Deitsch v. Loonen, 141 Off. Gaz. 1161.

44-W. A. Gaines & Co. v. Knecht & Son, 120 Off. Gaz. 1163. For practice in opposition proceedings see notes, §§ 6, 7, Act of 1905, Appendix 390E, post.

CHAPTER X.

COURTS, PARTIES AND PROCEDURE.

§ 170. Introductory. The person who has been injured by trademark infringement or other unfair competition usually has some latitude in the selection of a forum.

In some of

the states the courts have exhibited a willingness to furnish redress for this species of fraud, in others this indication is lacking. The prospective plaintiff will choose between the state and federal courts, where federal jurisdiction exists, with a view to selecting the one in which the law of the subject is well settled, and in which the nisi prius judge has not exercised his inventive genius in devising excuses for fraud.

The plaintiff may be able to invoke the criminal process of the state courts, under a particular statute. A search warrant may be obtainable under such an act, and aid in the preparation of a subsequent civil suit. The nature of the unfair competition may be such as to warrant the filing of information with the Federal Trade Commission.

Where federal jurisdiction exists, by reason of registration of the trademark infringed, or by reason of diversity of citizenship (the amount in controversy being sufficient), the action is usually brought in the federal court, and by bill in equity. Hence this chapter will be devoted largely to a consideration of federal practice and procedure in the class of cases under discussion.

§ 171. Jurisdiction of United States district courts.-Sec. 7 of the Act of 1881 provides that courts of the United States shall have original and appellate jurisdiction in cases involving a registered trademark, without regard to the amount in controversy. It has been held in this connection (prior to the statutes of 1887 and 1888, which raised the "amount in controversy" necessary to federal jurisdiction from $500 to $2,000) that the federal courts were not limited in their trademark jurisdiction to cases in which the defendant's profits had ex

ceeded five hundred dollars.1 And a later decision has held that "The statute of 1881, which gives them (i. e., owners of registered trademarks) the right to commence a suit without alleging the amount in controversy, was not repealed by the statutes of 1887 and 1888, which make it necessary, in order to give jurisdiction to the United States Circuit Court. that the amount involved be two thousand dollars." 3 The Judicial Code, sec. 24, made the amount $3,000; the circuit court is abolished.

In cases where there is diverse citizenship it does not appear to be necessary to allege that the plaintiff uses his trademark on goods intended for commerce with foreign nations or with the Indian tribes; but it has been held that the federal courts have no jurisdiction in a trademark action between citizens of the same state unless the pleadings affirmatively show that the complainant uses his trademark on goods. intended for commerce with foreign nations or with the Indian tribes.3 It was necessary, under the Act of 1881, where both parties were citizens of the same state, to aver that the defendant had applied the simulated mark to goods intended to be used in such foreign commerce, or trade with the Indian tribes, although the reasoning of one of the cases tended to show that logically no such averment in the pleadings is necessary. It was not necessary to show that either party had used the mark in commerce with foreign nations or with the Indian tribes where the parties were of diverse citizenship."

4

Of course, in cases involving the right to an unregistered trademark, jurisdiction can only be acquired by the federal courts because of the diverse citizenship of the parties, and the amount in controversy, which must be over $3,000 exclu

1-Symonds v. Greene, 28 Fed. Rep. 834.

2-Glotin v. Oswald, 65 Fed. Rep. 151; Garland & Ralston, Federal Practice, 122; Hennessy v. Herrmann, 89 Fed. Rep. 669.

3-Ryder v. Holt, 128 U. S. 525; 32 L. Ed. 529; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823; Gravely v. Gravely, 52 Off. Gaz. 1538; 42 Fed. Rep. 265; Schumacher v. Schwenke, 26 Fed. Rep. 818;

Luyties v. Hollender, 27 Blatchf.

413.

4-Gravely v. Gravely, 52 Off. Gaz. 1538; 42 Fed. Rep. 265; Warner v. Searle & Hereth Co., 191 U. S. 195; 48 L. Ed. 145.

5-Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 823.

6-Hennessy v. Braunschweiger & Co., 89 Fed. Rep. 664.

7-Battle v. Finlay, 50 Fed. Rep.

sive of interest and costs; as to trademarks, their jurisdiction is concurrent with that of the state courts. By virtue of the Act of Congress of March 3, 1887, ch. 373, as corrected by the Act of August 13, 1888, ch. 866, suit can not be brought against a corporation for infringement of a trademark except in the district where it is incorporated.8

Where a bill was brought to restrain infringement of a registered trademark and to restrain the defendants from unfair competition in simulating the form, size, color and shape of cough-drops manufactured by the complainants (both parties being citizens of the same state), the United States Circuit Court of Appeals for the Second Circuit held that the fact that the trademark had not been infringed deprived the circuit court of jurisdiction, and that court had therefore erred in granting an injunction to restrain the unfair competition complained of."

In a suit for injunction the "amount in controversy" is the value of the object to be gained by the bill, and not the amount of damages already suffered by the complainant.10 In actions for infringement of trademark or for unfair competition, therefore, the amount of profits sought to be recovered does not determine this jurisdictional question. In trademark cases it is the value of the trademark that determines and fixes the "amount in controversy.

11

In a suit for the protection of a tradename, not a trademark, from unfair competition, "it is the value of that name, as measured by the damages to it, not only present but prospective, which determines the amount in controversy.

106; Burt v. Smith, 71 Fed. Rep. 161; Prince's Metallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493.

8-In re Keasbey & Mattison Co., 160 U. S. 221; 40 L. Ed. 402; Garland & Ralston, Federal Practice, § 161.

9-Burt v. Smith, 71 Fed. Rep. 161. To the same effect see Goldstein v. Whelan, 62 Fed. Rep. 124; Luyties v. Hollender, 30 Fed. Rep.

632.

12

10-Glenwood Light & Water Co. v. Mutual Light Co., 239 U. S. 121; 60 L. Ed. 174; Mississippi & Mo. R. R. Co. v. Ward, 2 Black, 485; Market Co. v. Hoffman, 101 U. S. 112; 25 L. Ed. 782; Symonds v. Greene, 28 Fed. Rep. 834; Whitman v. Hubbell, 30 Fed. Rep. 81.

11-Symonds v. Greene, 28 Fed. Rep. 834; Hennessy v. Herrmann, 89 Fed. Rep. 669.

12-Archbald, J., in Draper v. Skerrett (2), 116 Fed. Rep. 206, 207.

This must be specifically pleaded, because "the requisite value of the matter in controversy is a jurisdictional fact, and it must necessarily be averred in the declaration or bill. There are no presumptions in favor of the jurisdiction of the federal courts, as they are specially constituted with jurisdiction in certain cases; and the facts upon which it rests must appear in some form in the record of all suits prosecuted before them. They have no jurisdiction except such as the statute confers.

7 13

Thus where a tradename (not a technical trademark) is alleged to be of a certain value, but there is no averment that the defendant's acts will, unless restrained, tend to destroy it or put its value in jeopardy, the bill is demurrable.14

When the parties are citizens of different states, so that the case comes within the general grant of jurisdiction in the first part of the Act of March 3, 1887, the defendant, by entering a general appearance in a suit brought against him in a district of which he is not an inhabitant, waives the right to object that it is brought in the wrong district.15 But a corporation, by doing business or appointing a general agent in a district other than that in which it is created, does not waive its right, if seasonably availed of, to insist that the suit should have been brought in the latter district. 16

still further suffer great and irreparable damage.' There is no averment that complainant's trade name will be destroyed, nor that it is in jeopardy. The court can not assume, in the absence of allegations to that effect, that the tradename will be destroyed, or that complainant's damages are in excess of $2,000." Kohlsaat, J., in Winchester Repeating Arms Co. v. Butler Bros., 128 Fed. Rep. 976.

15-In re Keasbey & Mattison Co., 160 U. S. 221-229; 40 L. Ed. 402.

16-In re Keasbey & Mattison Co., 160 U. S. 221-229; 40 L. Ed. 402. This reverses the ruling in Gray v. Taper-Sleeve Pulley Works,