holding that “[i]n the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question.”
How later courts described this case
- holding that “[i]n the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question.”
- explaining that the junior user adopted the mark “in perfect good faith, with no knowledge that anybody else was using or had used those words”
- excepting from the general Tea Rose-Rectanus principle cases in which "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.”
- stating that trademarks exist “to identify the origin or ownership of the article to which it is affixed”
Written by the judges who cited it.
Later courts went against this
Reported superseded by statute, as recognized in Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. — not on the Supreme Court's list
240 U.S. 403, 420 (1916), superseded by statute as stated in Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189
Supreme Court of the United StatesJan 8, 19852 citing opinionsby statuteunconfirmed confidenceRead it
The opinion
Mr. Justice Holmes
concurring.
I am disposed to agree that the decree dismissing the bill of the Hanover Star Milling Company should be reversed and that the. decree denying a preliminary injunction to the Allen and Wheeler Company should be affirmed, and I agree in the main with the reasoning of the court, so far as it goes. But I think it necessary to go farther even on the assumption that we are dealing with *425 the question'of trade-marks in. the several States only so far as commerce among the States is not concerned. The •question before us, on that assumption, is a question of state law, since the rights that we are considering are conferred, by the sovereignty of the State in which they are acquired. This seems to be too obvious to need the citation of authority, but it is a necessary corollary of the Trade Mark Cases, 100 U. S. 82 . Those cases decided that Congress cannot deal with trade-marks as used in commerce wholly between citizens of the same State. It' follows that the States can deal with them, as in fact they sometimes do by statute, Mass. Rev. Laws, c. 72,. §§ 2, 3, and when not by statute by their common law. '
As the common law of the’several States has the same origin for the most part and as their law concerning trademarks and unfair fcompetition is the samp in its general features, it is natural and very generally correct to say that trade-marks acknowledge no territorial limits. But it never, should be forgotten, and in .this casé it is important. to remember, that when a trade-mark started in one State is recognized in another it is by the authority , of a new sovereignty that gives its sanction to the right. The néw sovereignty is not a passive figureheád. It creates the. right within its jurisdiction, and what it creates it may condition, as by requiring the mark to be recorded, or it may deny. The question then is what is the common law of Alabama in cases like these. It appears to me that if a mark previously unknown in that State has been used and ■ given a reputation thpre, the State well may say that those who have spent their money innocently in giving it its local value are not to be defeated by proof that others have used the mark earlier in another jurisdiction more or less remote. Until I am compelled to adopt a different view I shall assume that that is the common law of the State. It appears to me that the foundation of the right as stated by the court requires that conclusion. See *426 further Chadwick v. Covell, 151 Massachusetts, 190, 193, 194. Those who have uséd the mark within the State, are those who will be defrauded if another can come in and reap the reward of their efforts on the strength of a use elsewhere over which Alabama has no control.
I think state lines, speaking always of matters outside the authority of Congress, are important in another way. I do not believe that a trade-mark established in Chicago could be used by a competitor in some other part of Illinois on the ground that it was not known there. I think that if it is good in one part -of the State it is. good in all. But when it seeks to pass state lines it may find itself limited by what , has been done under the sanction of a power coordinate with that of Illinois and paramount over the territory concerned. If this view be adopted we get rid of all questions of penumbra, of shadowy marches where it is. difficult to decide whether the. business extends to them. We have sharp lines drawn upon the fundamental consideration of the jurisdiction originating the right. In most cases the change of jurisdiction will not be important because the new law will take up and apply- the same principles as the old, but when, as here,.justice to its own people requires, a State to set a limit, it may do so, and this court cannot pronounce its action wrong.