Opinion · Supreme Court of the United States
Holzapfel's Compositions Co. v. Rahtjen's American Composition Co.
Holzapfel's Compositions Co. v. Rahtjen's Am. Composition Co., 183 U.S. 1 (1901)
- Type
- Opinion
- Court
- Supreme Court of the United States
- Jurisdiction
- Federal
- Date
- 1901-10-21
- Topic
- general
How later courts describe this case
- "The only name by which it was possible to describe" an article was free for public use.
- “[Fjrom 1873 to 1880, while the patent was in life, they were entirely justified in calling it a patented article....”
- “Rahtjen’s Patent Composition” not protectable trademark because composition was not patented
- “A symbol or label claimed as a trademark, so constituted or worded as to make or contain a distinct assertion which is false, will not be recognized, nor can any right to its exclusive use be maintained."
Citator
UpLaw has not yet analyzed Holzapfel's Compositions Co. v. Rahtjen's American Composition Co.. The absence of a flag is not a finding that it is good law.
- Cited by
- 32 opinions
Headnotes
- Trademark Law — False Designations in Marks No right to a trademark that includes the word "patent" and describes the article as "patented" can arise where there is and has been no patent, nor is a claim to the other words used valid where it is based on their use in connection with that word. 183 U.S. at 7
- Trademark Law — False Assertions in Marks A symbol or label claimed as a trademark that is so constituted or worded as to make or contain a distinct assertion which is false will not be recognized, and no right to its exclusive use can be maintained. 183 U.S. at 7
- Trademark Law — Descriptive Names After Patent Expiration Where the right to manufacture an article becomes public upon the expiration of a patent, the right to use the only word descriptive of the article necessarily becomes public as well. 183 U.S. at 9
- Trademark Law — Descriptive Names After Patent Expiration A word that has throughout its existence been the name of the article itself, and the only name by which the article could be described, becomes public property descriptive of the article and does not designate the manufacturer once the patent covering the manufacture expires. 183 U.S. at 8
- Trademark Law — Disclaimer of Exclusive Rights Where a party obtains a trademark registration only by expressly disclaiming any right to the exclusive use of certain words except as part of the registered combination, the disclaimer is general, and a later assignment of its rights does not convey an exclusive right to those words that the assignor had already disclaimed. 183 U.S. at 12
- Trademark Law — Priority A registered trademark cannot interfere with a prior right to use descriptive words where the registration postdates the registrant's commencement of manufacture and sale of the article under that description. 183 U.S. at 11
- Trademark Law — Assignments Assignors who held no valid trademark in descriptive words prior to the expiration of the patent covering the article cannot convey by assignment an exclusive right to the use of those words in the United States, because upon expiration of the patent the right to that use had become public. 183 U.S. at 12
- Trademark Law — Principle of Singer Manufacturing Co. v. June Manufacturing Co. The principle prohibiting the exclusive use of a name descriptive of an article after the expiration of a patent covering its manufacture applies even where the trademark is domestic and the patent foreign. 183 U.S. at 12
HOLZAPFEL'S CO.v. RAHTJEN'S CO.,183 U.S. 1(1901)
22 S.Ct. 6
HOLZAPFEL'S COMPOSITIONS COMPANYv. RAHTJEN'S AMERICAN COMPOSITION
COMPANY.
CERTIORARI TO THE COURT OF APPEALS FOR THE SECOND CIRCUIT.
No. 54.
Argued April 25, 26, 1901.
Decided October 21, 1901.
THE respondent, a New York corporation, commenced this suit in
equity in the Circuit Court for the Southern District of
Page 2
New York, against the petitioner, which is a foreign corporation,
organized under the laws of the Kingdom of Great Britain, and
having a place of business in the city of New York, to restrain
it from the use of the trade-mark which the respondent averred it
had acquired in the name "Rahtjen's Composition" and to obtain an
accounting of the profits and income which the petitioner had
unlawfully derived from the use of such trade-mark, and which it
had by reason thereof diverted from the respondent. Issue was
taken on the various allegations in the bill, and upon the trial
the Circuit Court dismissed the same, 97 F. 949; but upon
appeal to the Circuit Court of Appeals the decree of the Circuit
Court was reversed and the case remanded to that court with
instructions to enter a decree enjoining the petitioner from
selling or offering to sell Rahtjen's Composition under that
name, and from using the name upon its packages or in its
advertisements. 101 F. 257; 41 C. C.A. 329.
Judge Wallace dissented from the judgment and opinion of the
Circuit Court of Appeals, holding that the case was properly
decided in the court below, and that the decree ought to be
affirmed.
The defendant and petitioner then prayed this court for a writ
of certiorari, which was granted, and the case thus brought here.
The trade-mark in regard to which this contest/arises pertains
to a certain kind of paint for the protection of ships' bottoms
from rust and from vegetable or animal growth thereon, either in
salt or fresh water. The paint was of three kinds, numbered,
respectively, Nos. 1, 2 and 3. The evidence in the record shows
that some time between the years 1860 and 1865, one John Rahtjen
invented in Germany a particular kind of paint for the purpose
above mentioned. In connection with his sons he began in 1865 to
manufacture the paint for general use, and it speedily acquired a
high reputation among owners of shipping as valuable for the
purposes intended. The elder Rahtjen never obtained a patent for
the article in Germany, neither did he or his sons apply for or
obtain one in the United States. They first shipped some of the
paint manufactured by them in Germany
Page 3
to the United States in 1870, consigned to Henry Gelien. They did
not put it upon the market by sending generally to those who
might wish to use it, but all their consignments from 1870 to
1878 were made to Gelien. Under what marks he sold the article
does not appear.
On November 19, 1869, one of the firm wrote to Mr. Gelien from
Bremerhaven, making him the sole agent of the firm for the sale
of its paint in the United States, and informing him that they
had not obtained a patent for their composition in America nor
applied for one in the United States, as there was no danger in
introducing the composition in America, the invention not being
of a nature facilitating good imitations. The father died in
1873, after which the sons continued the business.
Gelien was succeeded as the consignee of the paint in the
United States, in 1878, by the firm of Hartmann, La Doux
Maecker, to whom for a short time the paint was consigned from
Germany, and then it was sent them from England through Rahtjen's
assigns there. The Hartmann firm was succeeded in July, 1886, by
Emil Maecker, as agent for the sale of the paint in the United
States, and on January 1, 1889, Maecker was succeeded by one Otto
L. Petersen, and in 1891 Petersen was succeeded by the respondent
corporation, and was made its president.
On January 15, 1878, "Joh" Rahtjen assigned to "Messrs. Suter,
Hartmann Co., in London, the exclusive right of sale of my
patent composition paint for the United States of North America,
for the period of twelve years from the commencement of 1878 to
the end of 1889." After 1870 the firm of Hartmann Brothers, or
Suter, Hartmann Co., manufactured the composition for
themselves in England, by the license of the Rahtjens, and for a
time after 1874 Rahtjen also manufactured in England as well as
in Germany. During this time the composition when manufactured by
Hartmann was marked "Rahtjen's Patent Composition, Hartmann's
Manufacture." Up to the time of the above assignment the Rahtjens
had consigned their paint to New York in barrels or casks
addressed to Gelien, and with labels affixed thereon, in which
the article
Page 4
was described as "Rahtjen's Patent Composition," and after
Hartmann, La Doux Maecker became agents, the casks were
addressed to that firm at New York and labeled the same way.
While Gelien acted as consignee he prepared and issued a show
card and also letter heads and circulars with "Rahtjen's
Composition Paint, known as the German Paint," on the cards and
on the heading of his letters and circulars, and also directly
underneath was the picture of a vessel. The show cards and
circulars were issued for the purpose of advertising the paint,
and the show card was copyrighted by Gelien for himself.
After the assignment to Suter, Hartmann Co. of the exclusive
right of sale in the United States, and up to the year 1883, that
firm sent the paints to the United States under the description
of "Rahtjen's Patent Composition," and the Rahtjens themselves
sent no more paint to the United States from Germany.
In 1873 they entered into negotiations with Suter, Hartmann
Co., in England, for the sale of their paint in that country, and
on November 29, 1873, Heinrich Rahtjen obtained in England a
patent for the paint for the term of fourteen years from the date
thereof, provided, among other conditions, he should at the end
of seven years pay a stamp duty of one hundred pounds, and in
case he did not pay, the patent was to "cease, determine and
become void." It remained in existence for seven years, or until
November 29, 1880, and then ceased because of the failure to pay
the one hundred pounds stamp duty as provided for in the patent.
The label used by Suter, Hartmann Co. in sending the paint
to their different agents and customers contained the words
"Rahtjen's Patent Composition" and "None genuine without this
signature, Suter, Hartmann Co." These words were used by them
from the outset of their career as consignees for the
composition.
In May, 1883, two years and a half after the expiration of the
English patent, the predecessors of the petitioner commenced in
England to make and sell this paint, and in 1884 they sent it to
the United States under the name of "Rahtjen's Composition,
Holzapfel's Manufacture."
Page 5
On June 25, 1883, John Rahtjen filed with the English office
an application for registration as a trade-mark of the words
"Genuine Rahtjen's Composition for Ships' Bottoms," etc. This
application was opposed by Holzapfel Co., through their
solicitors, and no counter-statement having been filed by Rahtjen
the application was deemed to be withdrawn.
On July 7, 1883, Rahtjen filed another application for
registration of the words "Rahtjen Composition." This, too, was
opposed, and the application thereafter held to be withdrawn.
On June 28, 1883, Suter, Hartmann Co. filed an application
for the registration of the words "Rahtjen's Patent Composition
for Ships' Bottoms, Buoys, c. None genuine without this
signature, Suter, Hartmann Co."This application was opposed by
defendant's predecessors, Holzapfel Co., and was withdrawn.
On the 25th of April, 1883, Hartmann Brothers filed an
application for a trade-mark in this form:
[EDITORS' NOTE: TRADE MARK IS ELECTRONICALLY NON-TRANSFERRABLE.]
The application was granted, and from that time they had an
exclusive right to use that mark. It is not charged that the
defendant has ever in any way imitated or infringed upon it.
On January 9, 1884, Suter, Hartmann Co. filed an application
for the registration of the words "Rahtjen's Patent Composition
for Ships' Bottoms, Buoys, c. Directions. Suter, Hartmann Co."
In their application for registration they said: "We do not claim
the exclusive use of the words `Rahtjen's
Page 6
Patent Composition for Ships' Bottoms, Buoys c., Directions, or
any of such words, except as part of the combination constituting
our trade-mark, as represented annexed, and to which we claim
exclusive right." This trade-mark was registered. The following
is a copy:
--------------------------------------------
| RAHTJEN'S |
| PATENT COMPOSITION, |
| FOR SHIPS' BOTTOMS, BUOYS, c. |
| DIRECTIONS. |
| SUTER, HARTMANN Co. |
--------------------------------------------
There has never been any infringement of it by defendant, but
it has used the words "Rahtjen's Composition" in connection with
the statement that it was manufactured by Holzapfel Co., and it
has so used them on goods sold in the United States, and did so
at the time of the commencement of this suit.
Before the assignment to Suter, Hartmann Co. of the
exclusive right to sell the composition in the United States,
Rahtjen had transferred to Hartmann Brothers in England the
exclusive right to manufacture it there, and so in their
manufacture it was described as "Rahtjen's Composition. Hartmann
Brothers' Manufacture."
In 1888, Suter, Hartmann Rahtjen's Composition Company
(Limited) was formed, and Suter, Hartmann Co. assigned their
rights and interests in the paint and trade-mark to that company,
and in 1891 the respondent company was formed and the English
company transferred to it all rights to the trade-marks belonging
to and used by the English company in America, and agreed not to
carry on any business of a like character in the United States.
In 1899 complaint was made before the Court of Commerce,
sitting at Antwerp, by Rahtjen and by Suter, Hartmann Co.
Page 7
against defendant W. Wright, in which they complained of the
defendant that he had put on the sign of his house the
inscription "Manufacturers of Rahtjen's Composition," and that in
his prospectus and other publications he announced that he sells
the "Original Rahtjen's Composition for Ships' Bottoms,
manufactured by the London Oil and Color Co., Limited." This use
of the name of the complainant by the defendant, the court held,
constituted an illegal act, and even if the complaints had not
retained their right to the use of the words "Rahtjen's
Composition," that the defendant had not acquired the right to
use the name in such a way as to cause the public to believe that
his product was the product of Rahtjen or of his delegates. The
defendant was therefore condemned in judgment and enjoined from
the use of the words in future. An appeal was taken from this
decision and the court above reversed the judgment, holding that
the name "Rahtjen's Composition" had become the property of the
public, which had the right to "offer it for sale under the name
generally used to describe it, because any other name would
completely mislead the purchaser, always supposing that the
public is not to be led astray as to the individuality of the
manufacturer, or as to the source of the said products. As it is
shown by the documents deposited in the present process that the
varnish invented by the associate is generally known in England
and in Belgium under the name of Rahtjen's composition; so that
in the eyes of the public this name of Rahtjen has become a sort
of qualifying adjective indicative of this special product; as
the appellant has always in his sign and in his circulars been
careful to announce that the product that he sells was
manufactured by the `London Oil and Color Company,'" the court
held that the intention of bad faith which constitutes an element
necessary to the establishment of breach of faith had no actual
existence, and the judgment was therefore reversed.
Complaint had also been made by Mr. John Rahtjen in the court
at Hamburg against Holzapfel and others for the wrongful use of
the words "Rahtjen's Composition," and that court held in
substance that there was no longer any exclusive property in the
words used, and that the defendants should, therefore, be
discharged.
Page 8
Prior to November, 1873, the article was not patented anywhere, and a description of it as a patented article had no basis in fact, and was a false statement tending to deceive a purchaser of the article. No right to a trade-mark which includes the word "patent," and which describes the article as "patented" can arise when there is and has been no patent, nor is the claim a valid one for the other words used where it is based upon their use in connection with that word. A symbol or label claimed as a trade-mark, so constituted or worded as to make or contain a distinct assertion which is false, will not be recognized, nor can any right to its exclusive use be maintained.ManhattanMedicine Companyv.Wood,108 U.S. 218,225;Wrisley Co. v.Iowa Soap Co., 104 F. 548.
In 1873 an English patent had been obtained, and from that time to 1878, when the Rahtjens assigned the exclusive right of sale in the United States to Suter, Hartmann Co., the words "Rahtjen's Patent Composition" were used on casks containing the paint sent by the Rahtjens to the United States, and must have referred to the English patent, as there was no other, and the right to use those words depended upon the existence of the patent, although up to 1878 the article sent to thePage 9United States was manufactured in Germany. As the right to use the word depended upon the English patent, the right to so designate the composition fell with the expiration of that patent, and from that time (1880) until 1883, when the trade-mark was obtained by Suter, Hartmann Co., there can be no claim made of an exclusive right to designate the composition as Rahtjen's composition, because from 1880 that right became public as a description of the article and not of the name of the manufacturer. During its whole existence the name had been given to the article, and that was the only name by which it was possible to describe it.
The labels used by Suter, Hartmann Co., from the outset of their career as sole consignees, contained the description "Rahtjen's Patent Composition, None genuine without signature, Suter, Hartmann Co." These labels were affixed to the packages, and were sent to Rahtjen in Germany when he manufactured for them, to be placed on packages, and when he subsequently made the composition in England the labels were sent to him there to be affixed. This way of designating the composition was employed by Rahtjen in Germany for his own sales, and Suter, Hartmann Co. simply copied his method of describing the same. How else could this article thereafter be described? When the right to make it became public, how else could it be sold than by the name used to describe it? And when a person having the right to make it described the composition by its name and said it was manufactured by him, and said it so plainly that no one seeing the label could fail to see that the package on which it was placed was Rahtjen's composition manufactured by Holzapfel Co., or Holzapfel's Composition Company (Limited), how can it be held that there was any infringement of a trade-mark by employing the only terms possible to describe the article the manufacture of which was open to all? Of necessity when the right to manufacture became public the right to use the only word descriptive of the article manufactured became public also.
This rule held good when at the expiration of the patent in November, 1880, Suter, Hartmann Co. continued to send the paint to the United States as "Rahtjen's Patent Composition,Page 10Hartmann's Manufacture," because it is plain that the name of Rahtjen had, as we have said, become descriptive of the article itself, and was not a designation of the manufacturer. It had been manufactured both in Germany and in England at the same time, and that which was manufactured in England by Hartmann Brothers or Suter, Hartmann Co. had been distinguished from the German article by the statement that it was "Rahtjen's Genuine Composition, Hartmann's Manufacture." If any one had desired to use this paint and had called for it in the market, he would necessarily have been compelled to describe it as "Rahtjen's Composition," as there was no other name for the article, and though in England while the patent lasted no one but the patentee or his licensees could manufacture the article, yet the description would still have been "Rahtjen's Composition;" but when the patent expired the exclusive right to manufacture the article expired with it, while the name which described it became, under the facts of this case, necessarily one of description and did not designate the manufacturers. There was no other name for the article, and in order to obtain it a person would have to describe it by the words "Rahtjen's Composition." The words thus became public property descriptive of the article, and the right to manufacture it was open to all by the expiration of the English patent. After Suter, Hartmann Co. obtained the trade-mark of an open hand, originally painted red, together with the name "Rahtjen's Patent Composition," which was some time in 1883, the paint was sent to the United States under that designation; but the trade-mark was not obtained without the positive disclaimer by the plaintiffs of the right of exclusive use of the words "Rahtjen's Composition," and unless they disclaimed that exclusive right they could have obtained no trade-mark.
The registration of the trade-mark of Hartmann, La Doux Maecker in the United States in June, 1885, was not only subsequent to the expiration of the English patent, but also subsequent to the time when the defendant company had commenced to manufacture the paint as "Rahtjen's Composition, Holzapfel's Manufacture," and had sent the same to the United States under that description, at least as early as 1884. The UnitedPage 11States registered trade-mark could not, therefore, interfere with the prior (but not exclusive) right of the defendant to the use of those words.
The respondent company advertised and sold in the United States the composition under the name of "Rahtjen's Composition, Hartmann's Manufacture," while the petitioner advertised and sold its composition as "Holzapfel's Rahtjen's" or "Holzapfel's Improved Rahtjen's Composition," or "Holzapfel's Improved American Rahtjen's;" so it is seen there is no room for the claim that the composition manufactured by the petitioner purports to be manufactured by Rahtjen or Hartmann. It is a clear cut description of the name of the article which it manufactures, and there is no pretense of deceit as to the person who in fact manufacturers it.
The trade-marks which have been spoken of, and which were obtained in 1883 and 1884, do not cover the right to use the name "Rahtjen" exclusively. The trade-mark obtained in April, 1883, by Hartmann Brothers, described as the "red hand symbol," does not purport to contain any name, while that issued to Suter, Hartmann Co., while it contained the name "Rahtjen's Patent Composition," was obtained only by the disclaimer on the part of the applicants of the right to the exclusive use of those words, except as part of the combination constituting the trade-mark. Prior to the English patent, the respondent's predecessors or assigns had no valid trade-mark in England for the same reason the Rahtjens had acquired none in the United States, viz., they had no right to designate the composition as a patented article when in fact there was no patent. From 1873 to 1880, while the patent was in life, they were entirely justified in calling it a patented article, and when that patent expired, it seems clear they had no right to retain the exclusive use of the only name which described the composition, and that no such right could be claimed by virtue of a valid trade-mark antedating the patent, for there was none, assuming even that such fact, if it had existed, would have justified the claim to the exclusive use of the descriptive words after the patent had expired.
The judgments in the Antwerp and Hamburg courts simplyPage 12showed that in those countries the use of the words "Rahtjen's Composition" or "Rahtjen's Patent Composition" had become descriptive of the article itself and did not in any way designate the persons who manufactured it; but even without those judgments, the record shows beyond question that when the English patent expired the use of the words became open to the world as descriptive of the article itself, and to manufacture an article under that name was a right open to the world. There was no trade-mark in that name in the United States.
The principles involved inSinger Manufacturing Companyv.June Manufacturing Company,163 U.S. 169, apply here.
It is said there is a distinction between the case at bar and the one cited, because in the latter the patent and the trade-mark were both domestic, while here the trade-mark is domestic and the patent foreign. The respondent claims the right to use these words by virtue of assignments from the Messrs. Rahtjen and also Suter, Hartmann Co. in England, and also by virtue of a domestic trade-mark which it or its predecessors had acquired from user and registration in the United States. The rights of Suter, Hartmann Co. to the exclusive use of these words had been disclaimed by them in 1883, long before any assignment of their rights to the respondent, and we do not see why that disclaimer should be confined to England. It was a general disclaimer of any right whatever to the exclusive use of these words, and it was only upon the filing of that disclaimer that they obtained the trade-mark which they did in England. The disclaimer, however, was as broad as it could be made. When they assigned their rights the assignment did not include a right to an exclusive use which, in order to obtain the trade-mark registration, they had already disclaimed. The assignment of the Rahtjen firm could not convey the exclusive right to the use of such words, because they had no valid trade-mark in those words prior to 1873, and by the expiration of the English patent, in 1880, the right to that use had become public. These various assignors, therefore, did not convey by their assignment a right to the exclusive use of the words in the United States. The domestic trade-mark, which the respondent also claims gives it that right, was not used until after the sale ofPage 13the composition by the petitioner in the United States under the name of "Rahtjen's Composition, Holzapfel's Manufacture." We think the principle which prohibits the right to the exclusive use of a name descriptive of the article after the expiration of a patent covering its manufacture applies here.
In the manufacture and sale of the article, of course, no deceit would be tolerated, and the article described as "Rahtjen's Composition" would, when manufactured by defendant, have to be plainly described as its manufacture. The proof shows this has been done, and that the article has been sold under a totally different trade-mark from any used by respondent, and it has been plainly and fully described as manufactured by defendant or its assignors, the Holzapfels.We are of the opinion that no right to the exclusive use inthe United States of the words "Rahtjen's Composition" has beenshown by respondent, and that the decree of the Circuit Court ofAppeals for the Second Circuit should be reversed, and that ofthe Circuit Court for the Southern District of New York affirmed,and it is so ordered.