Evening star. [volume] (Washington, D.C.) 1854-1972, 1893-12-28
THE "PALNETrO" CASE.
The Appeal Of the Commfssioner OF
Patents From the Courts Decision.

Patents From the Courts Decision.
The appeal brief OF the commissioner or
patents in the case Of the application OF the
state of South Carolina for the use OF the
word Palmetto a trade mark for dispen-
sary whisky is. as stated in yesterdays
Star. ready to be filed. The document covers.
forty printed pages. and is On able presen-
tation of the governments side OF the case.
The Supreme Court of the District OF CO.
lumbia issued a mandamus commanding the
commissioner OF patents to issue the trade
mark petitioned for by the state OF South
Carolina, or. in case he was in default, to
appear before the court to show cause why
he refused to do SO. The appeal briefly sets
forth that the Supreme Court is In error In
taking jurisdiction OF the case to order the
writ of mandamus to ISSUE in that the
duties Of the commissioner of patents In the
matter of the application for the regfstra-
ton OF the alleged trade mark are cis-
cretionary and not ministerial. IL is claimed
that the court is in error In taking jurisdic-
ton Of the case. because he commissioner
had decided the presumptive lawfulness or
the REALTORS claim adversely, without fraud
or abuse Of his authority. The court is also
held to err in finding from the commission
ers answer to the petition as a fact that
the relator was lawfully engaged I'm q for
eign trade In the sale Of liquor.
After an exhaustive discussion OF the case
the brief concludes as follows: The theory
that there is no power under the trade mark
law to prevent an applicant from swearing
his application through to registration over
every obstacle Of ownership or validity OF
the alleged trade mark, or Its lawful use.
seems to be SO unjust to the public as to be
inadmissible The commissioner cannot be-
lieve IL to have been the intention OF Con-
gress, nor so expressed in the letter or spirit
or the trade mark law, that certificates OF
registration should be issued In defiance OF
notorious facts, proving the applicant TO be
acting not within the scope OF his powers. or
proving him not to be the owner OF trade
mark The commissioner cannot believe
that the law requires him to issue void
certificates OF registration In order to have
the courts declare them void pro forma-
suppose facts which would void q certin-
cate, IL one were to be issued, were within
the personal knowledge OF the commissioner.
is he required by the trade mark law to is
sue the certificate? Is he to justify his ac-
ton to the aggrieved public on the ground
that he is a mere minister OF their law
when that law itself declares that he shall
decide the presumptive lawfulness OF claims
to the alleged trade marky The allowance
of certificate under such circumstances
seems TO be wholly irreconcilable with the
mandatory requirements OF the trade mark
law. The commissioner looks TO the statute
creating his Office and defining his duties
Tor every power winch ne exercises, ana
when he reads therein that he shall decide
the presumptive lawfulness of claim 70 the
alleged trade mark IL seems to him that
these positive words require him TO decide
the presumptive lawfulness OF the claim OF
the state of South Carolina to the alleged
trade mark Palmetto IL Is a strange
theory and construction OF the law TO re-
quire him to issue a certificate establishing
a prima facie ownership OF a trade marx
and guaranteeing protection OF the mark
upon a state of facts which. when made ap-
parent to a court OF law equity. would
compel the court to pronounce the certin-
cate utterly void. II is said that the law
never exacts vain things TO be done, but 20
command the commissioner OF patents 10 Is
sue a worthless and void certificate in this
case would be worse than vain. IL would
be to direct that Benjamin n. Tillman
should be armed with a warrant, In the
name and under the seal OF the United
States, to go into all the federal courts IN
the land and hunt down and criminaily
prosecute his fellow citizens with oppres-
sive. vexatious litigation. in order TO carry
out a dispensary law of the state OF South
Carolina"