wholly without jurisdiction to try the case in the first instance, the parties being citizens of the same State; and, as the circuit court was without jurisdiction to try the issue of unfair trade, the circuit court of appeals was also without jurisdiction, and that this Court, on appeal, could not decide that issue. In the case at bar, however, it is urged there is a diversity of citizenship as well as the assertion of a right under the Federal statute, and that the circuit court and the circuit court of appeals both had jurisdiction on that ground as well as on the other, and the case, therefore, it is contended, falls under Henningen v. United States Fidelity and Guaranty Co., (208 U. S., 404,) Northern Pac. Ry. Co. v. Loderberg, (188 U. S., 526,) Penn. Mutual Life Ins. Co. v. Austin, (168 U. S., 685,) Northern Pac. Ry. Co. v. Amato, (144 U. S., 465,) Warner v. Searle & Hereth Co., (191 U. S., 195,) Elgin Watch Co. v. Illinois Watch Co., (C. D., 1901, 273; 94 O. G., 755; 179 U. S., 665.) Passing the last two cases for the moment, we may say of the others that while there was diversity of citizenship, and that would have given jurisdiction to the circuit court independently of any Federal question, statutory or constitutional, a consideration of a statute or the Constitution of the United States entered into the merits. Such is not the condition in the case at bar as to the issue of unfair trade. The asserted trade-mark as such is not an element. The issue is made independently of it, and under the assumption of its invalidity. If the trade-mark were valid, the issue of unfair trade would be unnecessary to decide. Such an issue between citizens of different States, even if there were no technical trade-mark, a circuit court would have jurisdiction to try, and the circuit court of appeals would have jurisdiction to review, but the judgment of the latter court would be final. Warner v. Searle & Hereth Co. and Elgin Watch Co. v. Illinois Watch Co. require special notice. In the latter case there was not diversity of citizenship, but there was the assertion of a trade-mark in the word "Elgin." The circuit court sustained it; the circuit court of appeals held it invalid and reversed the decree of the circuit court and ordered a dismissal of the bill. This Court affirmed the action of the circuit court of appeals. It was held that the word was geographically descriptive and not subject to be registered as a trademark. It was contended, however, that the word had acquired a secondary signification, and should not therefore be considered as merely a geographical name. It was conceded, in answer to the contention, that words could acquire a secondary signification, and their use in that sense be protected. But the concession and the discussion were for no other purpose than to bring out clearly, in opposition to the contention based on the secondary signification of a word, that it could be, though a generic and descriptive name, "lawfully with drawn from common use" by being registered as a trade-mark. And the Court was careful to observe that the question considered was not whether this record makes out a case of false representation, or perfidious dealing, or unfair competition, but whether appellant had the exclusive right to use the word "Elgin" as against all the world. The question was asked, "Was it a lawful registered trade-mark?” If So, the answer was: Then the circuit court had jurisdiction under the statute to award relief for infringement, but if it were not a lawfully registered trade-mark, then the circuit court of appeals correctly held that jurisdiction could not be maintained. The case may be said to be only of negative value. Unfair trade, we have seen, was referred to, and it was discussed also by the circuit court of appeals, but it put it aside as an element of decision, because the court was, as it said, "without jurisdiction to grant relief," as the right of the Elgin Watch Company arose under the act of Congress, and was limited by the act to recovery of damages for the wrongful use of a trade-mark, or to a remedy according to the course of equity— to enjoin the wrongful use of said trade-mark used in foreign commerce or commerce with the Indian tribes. The remedy in equity for fraud, it was said, existed before the statute and was not given by it, and that the Federal court would have no jurisdiction of it except between citizens of different States. (94 Fed., 667.) Warner v. Searle & Hereth Company was a suit between citizens of different States. The bill alleged the infringement of a trademark for the word "Pancreopepsine." Unfair competition was also. alleged. The circuit court found that there was no proof of the latter, but held that the complainant had a valid trade-mark and enjoined the defendant from its use. The circuit court of appeals concurred in the finding as to unfair competition, but decided against the validity of the trade-mark and reversed the decree of the circuit court and ordered the bill to be dismissed. We affirmed the decree of the circuit court of appeals and said that the courts of the United States cannot take cognizance of an action on the case or a suit in equity between citizens of the same State unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe. But we also said that where diverse citizenship exists, and the statutory amount is in controversy, the courts of the United States have jurisdiction, but where those conditions do not exist, jurisdiction can only be maintained where there is interference with commerce with foreign nations or Indian tribes. It was held, besides, that as diverse citizenship existed the circuit court had jurisdiction, and in answer to the contention that as jurisdiction depended entirely on diversity of citizenship the decree of the Circuit Court of Appeals was final, this was said: We think, however, that as infringement of a trade-mark registered under the act was charged, the averments of the bill, though quite defective, were sufficient to invoke the jurisdiction also on the ground that the case arose under the law of the United States, and will not, therefore, dismiss the bill. No notice was given to the charge of unfair competition, and yet, if the contention of the Paint Company in the case at bar be sound, we should have decided that question because it was decided in the courts below, for, we have seen, it is the contention of the Paint Company in this case that the lower courts having jurisdiction to decide the question of unfair competition, this Court also has jurisdiction. But, as we have seen in Warner v. Searle & Hereth Co., we did not pass on the question of unfair competition, though the same conditions of jurisdiction existed which exist in this case. Warner v. Searle & Hereth Co. has in it, therefore, an element of uncertainty, but the statute must be considered. It makes the judgment of the Circuit Court of Appeals final in all cases in which the jurisdiction [the jurisdiction of the circuit court is meant] is dependent entirely upon the opposite parties to the suit or controversy being aliens and citizens of the United States or citizens of different States; also in all cases arising under the patent laws, under the revenue laws, and under criminal laws, and in admiralty laws. In all other cases there is a right of review by this Court if there is the statutory amount involved. The case at bar is within the letter of the statute. The opposite parties to the suit are citizens of different States, and while this diversity of citizenship was not necessary to give the circuit court jurisdiction of the case in so far as it involved the validity of the trade-mark, it was necessary to give the court jurisdiction of the issue of unfair competition. If the latter had stood alone its decision would have been final in the court of appeals, and this Court would have had no jurisdiction to review its decision, and there is some objection on principle, notwithstanding the union of the charge of unfair competition with the claim of a trade-mark, to our taking jurisdiction, but such, we think, is the effect of the statute. (McFadden v. United States, 213 U. S., 288; Spreckels Sugar Refining Co. v. McClain, 192 U. S., 397.) We come, therefore, to a consideration of the question of unfair competition. The circuit court of appeals decided the question against the Paint Company. The views of the circuit court may be open to dispute. The majority of the court of appeals was of opinion that, aside from the use of the word "Rubbero," there was no imitation by the Asphalt Company of the Paint Company's roofing, indeed that the arrangement, color, design, or general appearance of the wrappers and markings on the packages— were in such— marked contrast as to repel all suggestion of design on the part of the former to misrepresent the origin or ownership of its product. The Circuit Court expressed itself as follows: It is true that there is no limitation in the arrangement, color, or general appearance of the labels, as such, aside from the similarity of the names, but I think the use of names so similar on rolls of similar size and shape both containing roofing material is calculated, whether intentionally or unintentionally, to confuse and deceive the public. Circuit Judge Sanborn, dissenting from the opinion and judgment of the court of appeals, was of the opinion that the circuit court found that the Asphalt Company was guilty of unfair competition; and he concurred in the finding, thus giving the weight of his judgment to its support. We think the evidence supports the conclusion of the circuit court of appeals. The only imitation by the Asphalt Company of the roofing of the Paint Company is that which exists in the use of the word "Rubbero," and this only by its asserted resemblance to the word "Ruberoid." To preclude its use because of such resemblance would be to give to the word "Ruberoid" the full effect of a trade-mark, while denying its validity as such. It is true that the manufacturer of particular goods is entitled to protection of the reputation they have acquired against unfair dealing, whether there be a technical trade-mark or not, but the essence of such a wrong consists in the sale of the goods of one manufacturer or vendor for those of another. (Elgin National Watch Co. v. Illinois Watch Co., supra.) Such a wrong is not established against the Asphalt Company. It does not use the word "Rubbero" in such a way as to amount to a fraud on the public. Decree affirmed. Mr. Justice HUGHES concurs in the result. [Supreme Court of the United States.] DIAMOND RUBBER CO. OF NEW YORK v. CONSOLIDATED RUBBER TIRE Co. AND RUBBER TIRE WHEEL CO. Decided April 10, 1911. 166 O. G., 251; 220 U. S., 428. 1. PATENTABILITY-RUBBER-TIRED WHEELS. The Grant patent, No. 554,675, for a rubber-tired wheel, Held not anticipated, valid, and infringed. 2. DECISION Granting INJUNCTION-LIMITATION OF INJUNCTION. A decree enjoining infringement of a patent may properly provide that it shall not apply to a sale by defendant of articles made by the defendant in another suit brought by complainant in another circuit in which the patent was adjudged void; but the proviso will not be extended to cover other articles made in the latter circuit where the question of such right is not directly involved under the evidence. ON WRIT of certiorari to the United States Circuit Court of Appeals for the Second Circuit. Mr. Charles K. Offield for the petitioner. Mr. Frederick P. Fish, Mr. J. L. Stackpole, and Mr. C. W. Stapleton for the respondent. Mr. Justice McKENNA delivered the opinion of the Court. Writ of certiorari to review a decree of the Circuit Court of Appeals of the Second Circuit sustaining a patent for an improvement in rubber tires issued to Arthur W. Grant, February 18, 1896. The patent, and those which it is contended anticipate it, have received full exposition in the opinion of that court. (157 Fed. Rep., 677, and 162 Fed. Rep., 892, affirming 147 Fed. Rep., 739.) It and they were also passed upon and the patent sustained in Rubber Tire Wheel Co. v. Columbia Pneumatic Wagon Wheel Co., (91 Fed. Rep., 978) and in Consolidated Rubber Tire Co. v. Finlay Rubber Tire Co., (116 Fed. Rep., 629;) Consolidated Rubber Tire Co. v. Firestone Tire and Rubber Co., (151 Fed. Rep., 237.) See also Rubber Tire Wheel Co. v. Milwaukee Rubber Works (142 Fed. Rep., 531) and the same case, (154 Fed. Rep., 358.) It was held invalid in Goodyear Tire & Rubber Co. et al. v. Rubber Tire Wheel Co., (C. C. App. Sixth Circuit, 116 Fed. Rep., 363,) reversing the circuit court, Judge Wing presiding. It was also declared invalid in Rubber Tire Wheel Co. v. Victor Rubber Tire Co., (123 Fed. Rep., 85, following 116 Fed. Rep., 363, supra.) A further display of the patent and of its alleged anticipating devices would seem to be unnecessary, and that we might immediately take up a review of the divergent decisions. There is controversy as to whether they are divergent and irreconcilable in fundamental conceptions of the patent as well as in result. We may say at the outset of this asserted conflict between the cases that the Court of Appeals of the Second Circuit considered that there was no antagonism between its decision and that of the Court of Appeals of the Sixth Circuit. It proceeded, as it in effect said, upon new facts and features which have been added to or developed from the records in the earlier cases. 2097°-12-36 |