a patent it has no means of putting the gran-13. TRADE-MARKS AND TRADE-NAMES3(4) tee in possession, and yet its authority to issue patents is beyond question. When it awards a tract to one of two rival homestead claimants it has no means of putting the successful one in possession or the other one out, and yet its authority to determine which has the better claim is settled by repeated decisions of this court. And a similar situation exists in respect of most of the claims or controversies on which the department must pass in regular course. Its province is that of determining questions of fact and right under the public land laws, of recognizing or disapproving claims according to their merits and of granting or refusing patents as the law may give sanction for the one or the other. When there is occasion to enforce its deci sions in the sense suggested, this is done through suits instituted by the successful claimants or by the government, as the one or the other may have the requisite interest. [4] Whether the tract covered by Cameron's location was mineral and whether there had been the requisite discovery were questions of fact, the decision of which by the Secretary of the Interior was conclusive in the absence of fraud or imposition, and none was claimed. Catholic Bishop of Nesqually v. Gibbon, supra; Burfenning v. Chicago, St. Paul, etc., Ry. Co., 163 U. S. 321, 323, 16 Sup. Ct. 1018, 41 L. Ed. 175. Accepting the Secretary's findings that the tract was not mineral and that there had been no discovery, it is plain that the location was invalid, as was declared by the Secretary and held by the courts below. MARK CONSISTING IN PART OF DESCRIPTIVE WORDS MAY BE REGISTERED, WHEN ACCOMPANIED BY DISCLAIMER. Under Act Feb. 20, 1905, § 5, as amended by Act Jan. 8, 1913 (Comp. St. § 9490), providing that no mark shall be refused registration as a trade-mark on account of its nature, unless it consists of certain prohibited matter, provided that no mark which consists "merely" in descriptive words or devices shall be registered, a trade-mark consisting of descriptive words used in a described manner of association with nondescriptive words and as a definitely positioned part of an entirely fanciful and arbitrary design or seal, cannot be denied registration when accompanied by a disclaimer of the descriptive words except in the precise relation and association in which they appear, nor can elimination of such descriptive words, thereby changing the mark as previously used, be required as a condition of registration. Mr. Justice McReynolds dissenting. On Writ of Certiorari to the Court of Appeals of the District of Columbia. Application in the Patent Office for the registration of a trade-mark by the Estate of P. D. Beckwith, Incorporated. A decision of the Commissioner of Patents, granting registration on conditions, was affirmed by the Court of Appeals for the District of Columbia (48 App. D. C. 110), and the petitioner brings cer- . tiorari. Reversed. *539 *Mr. Harry C. Howard, of Kalamazoo, Mich., for petitioner. Mr. Assistant Attorney General Davis, for respondent. Mr. Justice CLARKE delivered the opinion of the Court. The petitioner, a corporation, filed an application in the Patent Office for the registration of a trade-mark, which is described as follows: "A design like a seal, comprising the head of an Indian chief surmounting a scroll bearing his name, 'Doe-Wah-Jack' and surrounded by a circle, outside of which appeared the words 'Round Oak' and 'Moistair Heating System' in a circle, and the whole being surrounded by a wreath of oak leaves." For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes (40 Sup.Ct.) It was averred that the petitioner had used both registrable and nonregistrable matterthe mark for more than 18 months before the have been presented for registry with fea *540 application was made by applying it to "hot air and combined hot-air and hot-water heat ers and furnaces by having the same cast into the metals of which the systems were constructed." The Commissioner found that the mark did not conflict with any other that was register ed, and that the petitioner was entitled to the exclusive use of it excepting the words "Moistair Heating System." It was ordered that the mark might be registered if the excepted words, objectionable because descriptive, were "erased" or "removed" from it, but that the filing of a disclaimer would not suffice to secure registration. Not satisfied with this result, the petitioner appealed to the Court of Appeals for the District of Columbia, and its judgment affirm ing the decision of the Commmissioner of Patents is before us for review. The ground of both decisions is that the words "Moistair Heating System" are merely descriptive of a claimed merit of the petition er's system that in the process of heating tures in them which conflicted with earlier marks, registered by other than the applicant, the complete rejection, "eradication," of the conflicting portions has been uniformly required before registry was allowed. But where there was no such conflict, and the only objection was that descriptive words were used, the practice of the Patent Office prior to the decision, in 1909, of Johnson v. Brandau, 32 App. D. C. 348, was to permit the registration of marks containing such words, where they were associated with registrable words or were a part of an arbitrary or fanciful design or device; it being considered not necessary to delete the descriptive matter, even when it was an essential part of the composite trade-mark as it had been used by the applicant, provided it was clearly not susceptible of exclusive appropri ation under the general rules of law. After the decision of Johnson v. Brandau, 32 App. D. C. 348, a practice grew up in the Patent Office, not provided for in the statute, of allowing an applicant to disclaim objectionable *542 moisture is added to the air-and that one descriptive words in cases where to require person may not lawfully monopolize the use their actual removal would result in so changof words in general use which might be used ing the mark that it would not readily be with equal truthfulness to describe another recognized as that shown in the drawing or system of heating. For this reason it was specimen filed with the application. The cusheld that the case falls within the proviso of tomary form of such disclaimer was a statethe Registration Act of 1905, declaring that ment filed that no claim was made to the no mark consisting merely in words or devices designated words, as, for example, "Moistair which are descriptive of the goods with Heating System," apart from the mark shown which they are used or of the character or quality of such goods shall be registered under the terms of the act. Act Feb. 20, 1905, § 5, 33 Stat. 725, amended by Act Jan. 8, 1913, 37 Stat. 649 (Comp. St. § 9490). No question of patent right, or of unfair competiton, or that the design of the trademark is so simple as to be a mere device or contrivance to evade the law and secure the registration of non-registrable words, is involved. Nairn Linoleum Co. v. Ringwalt Linoleum Works, 46 App. D. C. 64, 69. *541 *This statement makes it apparent that the question presented for decision is: Whether the applicant may lawfully register the words "Moistair Heating System," when combined with the words "Round Oak," as a part of its purely fanciful and arbitrary trade-mark design, as shown in the drawing filed, and when claim to exclusive use of the words apart from the mark shown in the drawing is disclaimed on the record. in the drawing-this was interpreted as meaning that only when taken in connection with the remaining features of the mark did the applicant make claim to their exclusive use. Ex parte Illinois Seed Co., 219 O. G. 931. Such disclaimer became a part of the applicant's statement in the record and necessarily formed a part of the certificate of registration as it would appear in the copies of it furnished to the applicant and the public, pursuant to section 11 of the act (Comp. St. §9496). Then came the decisions in Fishbeck Soap Co. v. Kleeno Manufacturing Co., 44 App. D. C. 6, and Nairn Linoleum Co. v. Ringwalt Linoleum Works, 46 App. D. C. 64, which, says the Commissioner of Patents, were understood as disapproving the practice of disclaimer, and since they were rendered, registration of merely descriptive matter has not been allowed in any form, but its actual deletion from the trade-mark drawing has been required, with, however, an apparent exception in the Case of Rinsburger, 8 T. M. Repts. 567, 128 MS. Dec. 141. The judgment we are considering, requiring, as it does, the "elimination" of the descriptive words, shows that the Commissioner correctly interpreted these two decisions of the Court of Appeals. An account of the process of decision, in the Patent Office and in the Court of Appeals, by which the result in this case was arrived at, as it appears in the brief of the Commissioner of Patents, is suggestive and useful. From this we learn that, when a mark has been presented for registration consisting merely (only) of descriptive words or devices, It is apparent from this rehearsal that the registration has been uniformly refused. Commissioner of Patents has promptly and When "composite" marks-such as contain cordially accepted for his guidance the deci sions of the Court of Appeals, and, although, S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365; Standhe avoids a controversial attitude in his brief ard Paint Co. v. Trinidad Asphalt Mfg. Co., and gives a colorless history of the practice The Registration Act of 1905 (33 Stat. 724), amended in 1906 (34 Stat. 168) and in 1909 (35 Stat. 627) and in 1913 (37 Stat. 649 [Comp. St. § 9485 et seq.]), without changing the substantive law of trade-marks, provided, in the manner prescribed, for the registration of marks (subject to special exceptions) which, without the statute, would be entitled to legal and equitable protection, and the case before us calls chiefly for the construction of the provisions of section 5 of that act (Comp. St. § 9490), which, so far as here involved, are as follows: "No mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark unless," etc. ** "Provided, that no mark which consists merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, shall be registered under the the terms of this act." * * * [1] It was settled long prior to the TradeMark Registration Act that the law would not secure to any person the exclusive use of a trade-mark consisting merely of words descriptive of the qualities, ingredients, or characteristics of an article of trade; this for the reason that the function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied, and words merely descriptive of qualities, ingredients, or characteristics, when used alone, do not do this. Other like goods, equal to them *544 in all respects, may be manufactured or *dealt in by others, who, with equal truth, may use, and must be left free to use, the same language of description in placing their goods before the public. Canal Co. v. Clark, 13 Wall. 311, 322, 323, 324, 20 L. Ed. 581; Manufacturing Co. v. Trainer, 101 U. S. 51, 54, 25 L. Ed. 220 U. S. 446, 31 Sup. Ct. 456, 55 L. Ed. 536. [2, 3] Thus the proviso quoted, being simply an expression in statutory form of the prior general rule of law that words merely decriptive are not a proper subject for exclusive trade-mark appropriation, if the application in this case had been to register only the words "Moistair Heating System," plainly it would have fallen within the terms of the prohibition, for they are merely descriptive of a claimed property or quality of the petitioner's heating system that by it moisture is imparted to the air in the process of heating. But the application was not to register these descriptive words "merely," alone and apart from the mark shown in the drawing, but in a described manner of association with other words, "Round Oak," which are not descriptive of any quality of applicant's heating system, and as a definitely positioned part of an entirely fanciful and arbitrary design or seal, to which the Commissioner found the applicant had the exclusive right. ment of the statute that *no trade-mark shall be refused registration, except in designated cases, is just as imperative as the prohibition of the proviso against registration in cases specified. While there is no specific provision for disclaimers in the trade-mark statute, the practice of using them is commended to our judgment by the statement of the Commissioner of Patents that, so far as known, no harm came to the public from the practice of distinguishing, without deleting, nonregistrable matter in the drawing of the mark as registered, when a statement, forming a part of the record, was required that the applicant was not making claim to an exclusive appropriation of such matter except in the precise relation and association in which it appeared in the drawing and description. It seems obvious that no one could be deceived as to the scope of such a mark, and that the registrant would be precluded by his disclaimer from setting up in the future any exclusive right to the disclaimed part of it. 993; Manhattan Medicine Co. v. Wood, 108 U. It seems obvious, also, that to require the de S. 218, 222, 2 Sup. Ct. 436, 27 L. Ed. 706; letion of descriptive words must result often Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 9 Sup. Ct. 166, 32 L. Ed. 535; Lawrence Manufacturing Co. v. Tennessee Manufacturing Co., 138 U. S. 537, 547, 11 Sup. Ct. 396, 34 L. Ed. 997; Brown Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625, 35 L. Ed. 247; Elgin National Watch Co. v. Illinois Watch Case Co., 179 U. in so changing the trade-mark sought to be registered from the form in which it had been used in actual trade that it would not be recognized as the same mark as that shown in the drawing which the statute requires to be filed with the application, or in the specimens produced as actually used, and therefore registration would lose much, if not all, of its (40 Sup.Ct.) value. The required omission might so plicant as it had been theretofore used, and change the mark that in an infringement suit it could be successfully urged that the registered mark had not been used, and user is the foundation of registry. Section 2 (Comp. St. § 9487). Of this last the case before us furnishes an excellent example. To strike out "Moistair Heating System" from the applicant's trade-mark would so change its appearance that its value must be largely lost as designating to prior purchasers or users the origin of the heating system to which it was applied. The commercial impression of a trade-mark *546 is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety (Johnson v. Brandau, supra), and to strike out any considerable part of it, certainly any conspicuous part of it, would be to greatly affect its value. Of course, refusal that the requirement of the act of Congress It results that the judgment of the Court of Mr. Justice McREYNOLDS dissents. (253 U. S. 12) MAGUIRE v. TREFRY, Tax Com'r of Commonwealth of Massachusetts. to register a mark does not prevent a for- (Argued March 24, 1920. Decided April 26, mer user from continuing its use; but it deprives him of the benefits of the statute, and 1920.) No. 280. this should not be done if it can be avoided by fair, even liberal, construction of the act, designed as it is to promote the domestic CONSTITUTIONAL LAW 283-TAXATION and foreign trade of our country. 104-TAX ON INCOME FROM SECURITIES HELD IN TRUST OUTSIDE THE STATE DOES NOT DENY DUE PROCESS. St. Mass. 1916, с. 269, § 9, taxing the income of a resident of the state from a trust administered under the laws of another state in securities in the possession of the trustee in such other state does not deny due process of law in violation of Const. U. S. Amend. 14, as subjecting to taxation property beyond the limits and outside the jurisdiction of the state, as the beneficiary has an equitable right, title and interest, distinct from the legal ownership. Mr. Justice McReynolds dissenting. Thus the case comes to this: That the Commissioner found that the trade-mark presented for registration did not conflict with any theretofore registered, and there is no suggestion of unfair practice in the past or contemplated in the future; that it had been used for 18 months in the form proposed for registry; that the words ordered to be stricken out from the drawing are descriptive, but the mark does not consist "merely" in such words, but is a composite of them with others, and with an arbitrary design which, without these words, both the Commissioner and the court found to be registrable; that the language of the statute, that no mark not within of Massachusetts. its prohibitions or provisos shall be denied registration, is just as imperative as the prohibitory words of the proviso; and, very certainly, that a disclaimer on the part of applicant that no claim is made to the use of the words "Moistair Heating System" apart from the mark as shown in the drawing and as described, would preserve to all others the right to use these words in the future to truthfully describe a like property or result of another system, provided only that they be not used in a trade-mark which so nearly resembles that of the petitioner "as to be likely to cause confusion in the mind of the public or to deceive purchasers" when applied "to merchandise of the same descriptive properties." Section 5. *547 *Such being the ultimate facts of this controversy, we cannot doubt that the Court of Appeals fell into error in ruling that the words "Moistair Heating System" must be "eliminated" from the trade-mark of the ap In Error to the Superior Court of the State Proceeding by Emily M. Maguire against William D. T. Trefry, Tax Commissioner of the Commonwealth of Massachusetts. By direction of the Supreme Judicial Court of Massachusetts (230 Mass. 503, 120 Ν. Ε. 162), judgment was entered, granting the petitioner insufficient relief, and she brings error. Affirmed. *13 *Mr. Richard W. Hale, of Boston, Mass., for plaintiff in error. Mr. Wm. Harold Hitchcock, of Boston, Mass., for defendant in error. Mr. Justice DAY delivered the opinion of the Court. Massachusetts has a statute providing for a tax upon incomes. Gen. Stats. Mass. 1916, c. 269. In the act imposing the tax it is provided: "If an inhabitant of this commonwealth receives income from one or more executors, ad For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes 40 SUP.CT.-27 ministrators or trustees, none of whom is an in- stitution, because, it is alleged, the effect of habitant of this commonwealth or has derived the statute is to subject property to taxa his appointment from a court of this commonwealth, such income shall be subject to the taxes assessed by this act, according to the nature of the income received by the executors, administrators or trustees." Section 9. tion which is beyond the limits and outside the jurisdiction of the state. To support this contention the plaintiff in error relies primarily upon the decision of this court in Union Transit Co. v. Kentucky, 199 U. S. 194, 26 Sup. Ct. 36, 50 L. Ed. 150, 4 Ann. Cas. 493. In that case we held that tangible, personal property, permanently located in The plaintiff in error is a resident of the state of Massachusetts, and was taxed upon income from a trust created by the will of one Matilda P. MacArthur formerly of Phil- another state than that of the owner, where adelphia. The plaintiff in error under the it had acquired a situs, and was taxed irrewill of the decedent was the beneficiary of spective of the domicile of the owner-was a trust thereby created. The securities were beyond the taxing power of the state, and held in trust by the Girard Trust Company that an attempt to tax such property at the of Philadelphia. Those which were directly owner's domicile was a denial of due process taxable to the trustee were held exempt from of law under the Fourteenth Amendment. taxation in Massachusetts under the terms This ruling was made with reference to cars of the Transit Company permanently emof the statute of that *state. The securities ployed outside the state of the owner's resithe income from which was held taxable in dence. In that case this court in the opinion Massachusetts consisted of the bonds of of Mr. Justice Brown, speaking for it, exthree corporations and certain certificates of pressly said that the taxation of intangible the Southern Railway Equipment Trust. personal property was not involved. 199 U. These securities were held in the possession S. 211, 26 Sup. Ct. 40, 50 L. Ed. 150, 4 Ann. of the trustee in Philadelphia. The trust Cas. 493. *14 was being administered under the laws of It is true that in some instances we have Pennsylvania. The Supreme Judicial Court held that bonds and bills and notes although of Massachusetts held the tax to be valid. evidences of debt have come to be regarded 230 Mass. 503, 120 N. E. 162. Of the nature of the tax the Chief Justice of Massachusetts, speaking for the Supreme Judicial Court, said: "The income tax is measured by reference to the riches of the person taxed actually made available to him for valuable use during a given period. It establishes a basis of taxation directly proportioned to ability to bear the burden. It is founded upon the protection afforded to the recipient of the income by the government of the commonwealth of his residence in his person, in his right to receive the income and in his enjoyment of the income when in his possession. That government provides for him all the advantages of living in safety and in freedom and of being protected by law. It gives security to life, liberty and the other privileges of dwelling in a civilized community. It exacts in return a contribution to the support of that government measured by and based upon the income, in the fruition of which it defends him from unjust interference. It is true of the present tax, as was said by Chief Justice Shaw in Bates v. Boston, 5 Cush. [Mass.] 93, at page 99: 'The assessment does not touch the fund, or control it; nor does it interfere with the trustee in the exercise of his proper duties; nor call him, nor hold him, to any accountability. It affects only the income, after it has been paid by the trustee' to the beneficiary." We see no reason to doubt the correctness of this view of the nature and effect of the Massachusetts statute, and shall accept it for the purpose of considering the federal *15 *question before us, which arises from the contention of the plaintiff in error that the imposition of the tax was a denial of due process of law within the protection of the Fourteenth Amendment to the federal Con as property which may acquire a taxable situs at the place where they are kept, which may be elsewhere than at the domicile of the owner. These cases rest upon the principle that such instruments are more than mere evidences of debt, and may be taxed in the jurisdiction where located, and where they receive the protection of local law and authority. Blackstone v. Miller, 188 U. S 189, 206, 23 Sup. Ct. 277, 47 L. Ed. 439; People ex rel. Jefferson v. Smith, 88 N. Y. 576, 585. At the last term we held in De Ganay v. Lederer, 250 U. S. 376, 39 Sup. Ct. 524, 63 L. Ed. 1042, that stocks and bonds issued by domestic corporations, and mort *16 gages secured *on domestic real estate, although owned by an alien non-resident, but in the hands of an agent in this country with authority to deal with them, were subject to the Income Tax Law of October 3, 1913, 38 Stat. 166. In the present case we are not dealing with the right to tax securities which have acquired a local situs, but are concerned with the right of the state to tax the beneficiary of a trust at her residence, although the trust itself may be created and administered under the laws of another state. In Fidelity & Columbia Trust Co. v. Louisville, 245 U. S. 54, 38 Sup. Ct. 40, 62 L. Ed. 145, L. R. A. 1918C, 124, we held that a bank deposit of a resident of Kentucky in the bank of another state, where it was taxed, might be taxed as a credit belonging to the resident of Kentucky. In that case Union Transit Co. v. Kentucky, supra, was distinguished and the principle was affirmed that the state of the owner's domicile might tax |