STARK BROS. NURSERIES & ORCHARDS COMPANY
v.
STARK ET AL., TRUSTEES, DOING BUSINESS UNDER THE NAME AND STYLE OF WILLIAM P. STARK NURSERIES
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Stark Bros. Nurseries & Orchards Company, a Missouri corporation, sued for infringement of its federally registered "Stark Trees" trademark and sought damages and profits dating back to when the infringement began in 1914, though it provided notice of the registered mark only in August 1916. The Supreme Court affirmed the lower courts' limitation of damages to the date notice was given, holding that under the Trade-Mark Act of 1905, a plaintiff seeking damages for infringement of a registered trademark must provide notice of registration before damages accrue, and cannot recover for earlier unnotified infringement even if the defendant's conduct was willful.
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Mr. Justice Holmes delivered the opinion of the court.
This is a suit brought September 11, 1916, in the District Court of the United States, by the petitioner, a Missouri corporation, against citizens of Missouri, for an infringement of a trade-mark, “Stark Trees,” registered under the Act of Congress of February 20, 1905, c. 592, 33 Stat. 724, and amendments. The District Court found infringement and unfair competition, granted an injunction, and made a decree for an account of profits from March 11, 1914, when the infringement began,, limiting the damages, however, to those suffered after August 26, 1916, that being the date when the plaintiff gave the defendant notice of the registration of the mark. The Circuit Court of Appeals concurred with the District Court as to the facts but limited the account as well as the damages to the date when notice was given of the registered mark, a few days before the bringing of this suit. 248 Fed. Rep. 154. 257 Fed. Rep.
9. This limitation is the only question here.
By § 28 of the Trade-Mark Act it is made the duty of the registrant to give notice to the public by attaching certain specified words or abbreviations to the trademark or to the receptacle wherein the article is enclosed; “and in any suit for infringement by a party failing-so to give notice of registration no damages shall be recovered, except on proof that the defendant was duly-notified of infringement, and continued the same after such notice.” 33 Stat.
730. The infringement that is sued for is infringement of a registered trade-mark, not infringement of a trade-mark. That is the plain meaning of the above words and the necessary scope of this suit since that is the scope of the jurisdiction of the District Court.
A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 172. It seems very plain that the plaintiff had a cause of action outside the statute, but that would have to be asserted elsewhere, as the suit was between citizens of the same State. The statute alone gave the right to come into this Court of the United States. Coming in to assert its statutory rights, we will assume in the. plaintiff’s favor* that it could recover for unfair competition that was inseparable from the statutory wrong, but it could not reach back and recover for earlier injuries to rights derived from a different source.
The plaintiff argues that a' notice of March 11, 1914, calling on the defendants “to discontinue the unfair competition and infringement on our rights” coupled with the wilful character of the defendants’ wrongdoing ought to lead to a different result, and the District Judge seems to have had a similar notion. But that is to forget the origin and necessary limit of the jurisdiction in this case.
Decree affirmed.
Cases With Similar Vibessemantic neighbors from the corpus
Citator
Cited By (11 total)
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Hurn v. Oursler, 289 U.S. 238 (U.S. 1933)…rative of the confusion and as indicating the importance of attempting to formulate some rule on the subject. And to that end we first direct attention to certain decisions of this court which seem most nearly in point. In Stark Bros. Co. v. Stark, 255 U.S. 50, suit was brought for infringement of a trademark and unfair competition. The circuit court of appeals limited damages to the date when notice was given of the registered mark, and refused to allow damages for earlier injuries. This court pointed ou…
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L. E. Waterman Co. v. Gordon, 72 F.2d 272 (2d Cir. 1934)…t. 425, 50 L. Ed. 710, and Elgin Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 21 S. Ct. 270, 45 L. Ed. 365, are overruled, at least in their ratio decidendi;» and we should suppose that the same must be true also of Stark Bros. Co. v. Stark, 255 U. S. 50, 41 S. Ct. 221, 65 L. Ed. 496. In the case at bar it is only necessary that we should hold that the cause of suit upon the registered trade-mark was substantial enough to support the jurisdiction of the District Court. If it was, Hurn v. Oursler, s…
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Levering & Garrigues Co. v. Morrin, 61 F.2d 115 (2d Cir. 1932)…lawfully registered, then jurisdiction could not be maintained.” And this is substantially repeated in Leschen & Sons Rope Co. v. Broderick, 201 U. S. 166, 26 S. Ct. 425, 50 L. Ed. 710, and Stark Bros. Co. v. Stark, 255 U. S. 50, 52, 41 S. Ct. 221, 65 L. Ed. 496. See, also, Standard Paint Co. v. Trinidad Asph. Co., 220 U. S. 446, 456, 31 S. Ct. 456, 55 L. Ed. 536; Geneva Furniture Mfg. Co. v. S. Karpen & Bros., 238 U. S. 254, 35 S. Ct. 788, 59 L. Ed. 1295. Numerous lower court autliorities, mostly to the…1 / 4
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- Ex parte Automatic Switch Co. of Baltimore City, 201 U.S. 166 (U.S. 1906)