United States v. Steffens
100 U.S. 82, 25 L. Ed. 550, 1879 U.S. LEXIS 1808 (1879)
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Rule of Law:
Federal trademark legislation is not constitutionally supported by the Patent and Copyright Clause, and any such legislation under the Commerce Clause must be limited on its face to regulating interstate, foreign, or tribal commerce.
Facts:
- In 1870, Congress enacted a statute allowing for the federal registration of trademarks in the U.S. Patent Office.
- In 1876, Congress passed a subsequent act that made the fraudulent use, sale, or counterfeiting of these federally registered trademarks a criminal offense.
- Several individuals, including Steffens, Wittemann, and Lopez, were criminally prosecuted under the 1876 act for the alleged fraudulent use of registered trademarks.
- The federal statutes in question applied generally to any person or firm in the United States and did not require that the trademark be used in interstate or foreign commerce.
Procedural Posture:
- Criminal prosecutions were initiated against several individuals in different federal circuit courts for violating the federal trademark act of 1876.
- Two cases, against Steffens and Wittemann, were brought by indictment in the U.S. Circuit Court for the Southern District of New York.
- A third case, against Lopez, was brought by information in the U.S. Circuit Court for the Southern District of Ohio.
- In all three cases, the circuit court judges were divided in their opinion regarding the constitutionality of the underlying federal trademark acts.
- The circuit courts certified the question of the laws' constitutionality to the U.S. Supreme Court for a final decision.
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Issue:
Do the federal trademark acts of 1870 and 1876, which establish a universal system for trademark registration and criminalize infringement without regard to the nature of the commerce involved, exceed Congress's constitutional authority under the Patent and Copyright Clause or the Commerce Clause?
Opinions:
Majority - Mr. Justice Miller
No, the federal trademark acts exceed Congress's constitutional authority. The court reasoned that the statutes could not be justified under the Patent and Copyright Clause (Article I, Section 8, Clause 8) because trademarks are fundamentally different from the novel inventions and original writings that the clause protects. A trademark does not require novelty, invention, or originality; it is a symbol whose value derives from priority of appropriation and use, not intellectual creation. The court then analyzed the Commerce Clause (Article I, Section 8, Clause 3), and while it did not decide whether trademarks could ever be regulated under this power, it found the current statutes unconstitutional because they were not limited to commerce with foreign nations, among the states, or with Indian tribes. The acts' language was universal, attempting to regulate all commerce, including purely intrastate commerce, which is beyond the scope of federal power. The Court refused to narrow the statutes' application to save them, stating that rewriting a law by inserting limitations is a legislative, not a judicial, function.
Analysis:
This decision invalidated the nation's first federal trademark laws, establishing that trademarks are legally distinct from patents and copyrights and cannot be regulated under the same constitutional clause. It forced Congress to reground federal trademark protection explicitly in the Commerce Clause, leading to subsequent legislation that was narrowly tailored to interstate and foreign commerce. The case serves as a foundational example of the principle of enumerated powers, reinforcing that Congress cannot legislate in a general area like commercial symbols without tying the regulation to a specific, limited grant of constitutional authority.
