Appeal from the District Court of the United States for the Southern District of New York.
Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
The questions of law which have been argued by the parties cannot properly be decided upon this record. There being no diversity of citizenship, the District Court is without jurisdiction to grant relief except pursuant to the terms of the Trade-Mark Act of 1905 as amended (15 USCA § 81 et seq.). Hunyadi Janos Corp. v. Stoeger, 10 F.2d 26 (C.C.A. 2). Assuming the validity of the plaintiff's trade-mark, and assuming further that its right to maintain suit has not been lost by use of the trade-mark in unlawful business, as provided by Trade-Mark Act 1905, § 21 (15 USCA § 101), its case fails for want of proof of any use of the mark by defendants in interstate or foreign commerce. Section 16 of the act (15 USCA § 96) provides as follows:
"* * * Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trade-mark and affix the same to merchandise * * * and shall use, or shall have used, such reproduction, counterfeit, copy, or colorable imitation in commerce among the several States, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof. * * *"
In a trade-mark suit under the federal act, it is essential for the plaintiff to allege and prove an infringement which falls within the terms of this section; counterfeit use of the mark in intrastate sales is not sufficient. Kasch v. Cliett, 297 F. 169 (C.C.A. 5); United States Printing Co. v. Griggs, Cooper & Co., 279 U.S. 156, 158, 49 S. Ct. 267, 73 L. Ed. 650; Louis Bergdoll Brewing Co. v. Bergdoll Brewing Co., 218 F. 131 (D.C.E.D. Pa.); and see, as to the Trade-Mark Act of 1881 (21 Stat. 502), Ryder v. Holt, 128 U.S. 525, 9 S. Ct. 145, 32 L. Ed. 529; Warner v. Searle & Hereth Co., 191 U.S. 195, 24 S. Ct. 79, 48 L. Ed. 145.
The bill of complaint is absolutely barren of any allegation that defendants have used, or threaten to use, plaintiff's mark in interstate or foreign commerce. Proof of this fact is equally lacking. We have searched the record in vain for evidence of such use. The closest approach to it is Young's testimony at folio 112:
"* * * In regard to the reappearance in the market of defendant's Trojan goods, I have seen the goods and seen the invoices in numerous places. Reports from all our salesmen about the goods being offered around the country had reached me."
This is entirely consistent with the defendants having made only intrastate sales, and their purchasers, without connivance on their part, having resold them in other places. The only infringements proved were sales made by defendants within the state of New York. Since the necessary jurisdictional facts were neither alleged nor proved, the bill should have been dismissed for lack of jurisdiction instead of lack of equity.
The decree is reversed, and cause remanded for dismissal on the ground herein stated.