UNITED STATES SUPREME COURT DECISIONS ON-LINE

A trademark consisting of an ordinary surname is not the subject of exclusive appropriation as a common law trademark, but may, under the fourth proviso of § 5 of the Trade-Mark Act of 1905, be validly registered if in use for ten years next preceding the passage of that act in the manner specified therein.

A proviso in a statute will not be so construed as to have little or nothing to act upon and to have no reason for its insertion.

The fourth proviso of § 5 of the Trade-Mark Act of 1905 modifies the general limitations contained in the second proviso of the same section against the use of personal and geographical names and terms descriptive of character and quality.

In enacting the Trade-Mark Act of 1905 and inserting the provisos in § 5 thereof, Congress did not intend to provide for a barren notice of an ineffectual claim, but to confer definite rights, and an applicant properly registering under the act becomes the owner of the trademark and entitled to be protected in its use as such.

While a trademark consisting of a proper name may be registered clubjuris

Page 233 U. S. 462

under the fourth proviso of § 5 of the Trade-Mark Act of 1905, another who uses that name will not be regarded as infringing the trademark unless the name is so reproduced, copied, or imitated as to mislead the public with respect to the origin or ownership of the goods.

Improperly using a proper-name trademark registered under the fourth proviso of § 5 of the Trade-Mark Act of 1905 in such manner as to mislead the public and thereby constitute infringement is not merely unfair competition at common law, which would not give the federal court jurisdiction unless diverse citizenship existed, but is a violation of a federal right, and a federal court has jurisdiction of an action based thereon.

While, in a case for unfair competition, it may be necessary to show intent to deceive the public, in a case for violation of a properly registered trademark, it is not necessary to show wrongful intent or facts justifying an inference of such intent.

Complainant having, for the period and in the manner specified in the proviso of § 5 of the Trade-Mark Act of 1905, used the name "Davids'" in connection with ink manufactured and sold by it in a particular manner, that name was properly registered as a trademark, and the defendants, by using the same word in such a similar style on the ink manufactured by them as to mislead the public, infringed complainant's rights under the statute, and should be enjoined.

192 F.9d 5 reversed.

The facts, which involve the construction of the Trade-Mark Act of February 20, 1905, and what constitutes infringement of a trademark registered thereunder, are stated in the opinion. clubjuris

Page 233 U. S. 463