(B.) STATUTES OF THE STATES AND TERRITORIES.

CASES ADJUDGED

IN THE

SUPREME COURT OF THE UNITED STATES,

AT

OCTOBER TERM, 1901.

HOLZAPFEL'S COMPOSITIONS COMPANY v. 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.

This was a controversy relating to a trade-mark for protective paint for ships' bottoms. The Court held:

(1) That no valid trade-mark was proved on the part of the Raltjens

Company in connection with paint sent from Germany to their agents in the United States, prior to 1873, when they procured a patent in England for their composition;

(2) That no right to a trade-mark which includes the word "patent," and which describes the article as "patented," can arise when there has been no patent;

(3) That 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, and no right to its exclusive use can be maintained;

(4) That of necessity when the right to manufacture became public, the right to use the only word descriptive of the article manufactured became public also;

(5) That no right to the exclusive use in the United States of the words · Rahtjen's Compositions " has been shown.

66

THE respondent, a New York corporation, commenced this suit in equity in the Circuit Court for the Southern District of

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(1)

Statement of the Case.

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 Fed. Rep. 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 Fed. Rep. 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 Ger