Sons, who were carrying on the business in Providence, R. I., of the manufacture and sale of certain proprietary medicines, notably the compound known as "Dr. Haynes' Arabian Balsam." To secure the complainants, Miller & Sons executed a chattel mortgage to them, dated June 1, 1875. On or about March 22, 1876, the complainants took possession under the mortgage and proceeded, through an agent, to carry on the business of the manufacture and sale of these medicines. Subsequently, on February 13, 1877, Miller & Sons conveyed to the defendant, Rogers, the exclusive right to use their trade-marks and to make and sell their medicinal compounds. The present suit is brought to restrain the defendant from using these trade-marks. The main question in the case turns upon the meaning of the following clause in the mortgage: The following articles of personal property, now in our possession, and now in and upon the premises known and designated as numbers (8) eight and (12) twelve High street, in said city of Providence, viz: The entire property, stock, furniture, and fix. tures, and other articles now in and upon said premises, together with all debts and book accounts, assets, and effects of every kind and nature belonging to said firm of J. Miller & Sons. The complainants contend that the above recital includes all trademarks then owned and used by Miller & Sons in their business on High street, and that such was the intention of the contracting parties. The defendant claims that this description does not cover any trade-mark, but only the property, stock, accounts, &c., belonging to the firm; that such was the intention of the parties, and that the proof shows that at most, and independent of the mortgage, the complainants have a parol license to use the trade-mark until reimbursed for their advances to Miller & Sons. The clause of conveyance in the mortgage is very broad in its terms. Clearly the language bears the construction, and will bear no other, than that the whole property of Miller & Sons upon the premises occupied by them, together with their assets of every kind, passed by way of mortgage to the complainants. The description plainly identifies the property and states what is conveyed. It is not a case where there is an ambiguity by reason of two inconsistent descriptions in the same instrument, nor is it a case where the instrument fails to point out the subject-matter, so that a stranger after examination might be deceived but in plain and unequivocal language, and for the large consideration of $48,500, the entire property of the firm of Miller & Sons at their place of business and all the firm assets are conveyed by way of mortgage to the complainants. There is no reason why a trade-mark cannot be conveyed with the property with which it is associated. As an abstract right, apart from the article manufactured, a trade-mark cannot be sold, the reason being that such transfer would be productive of fraud upon the public. In this respect it differs from a patent or a copyright; but in connection with the article produced, it may be bought and sold like other property. It constitutes a part of partnership assets, and is properly sold with the firm property. Brown on Trade-Marks, secs. 360, 361: Hall v. Barrows, 10 Jur. N. S., 55; Ainsworth v. Walmesley, 44 L. J. R., 252; Kidd v. Johnson, 100 U. S., 617; Walton v. Crowley, 3 Blatch., 440; Congress and Empire Spring Co. v. High Rock Congress Spring Co., 57 Barb., 526, and 4 Am. Law Times R., 168; Dixon Crucible Co. v. Guggenheim, 2 Brewster, 321. For a trade-mark to pass under a bill of sale it is not necessary that it should be specifically mentioned. In Shipwright v. Clements (19 Weekly Reporter, 599) there was a sale by one partner to the other of all his interest in the partnership, stock in trade, goods, chattels and effects, book debts, moneys in the bank, and all other property not being on the premises, the defendant covenanting that he would not carry on the trade within one mile of the premises or in any way affect the business to be thereafter carried on by the purchaser, the court held that this was a sale of the business, and that a trade-mark passed under such a sale, whether specially mentioned or not. If a trade-mark is an asset, as it is, there is no reason why it should not pass under the term "assets" in an instrument which conveys the entire partnership property. To hold that the trade-mark is not included in this mortgage is to say that the most valuable part of the partnership property is not covered by the words "assets and effects of every kind and nature." The evidence, in our opinion, strongly confirms the construction we have put upon the instrument, and shows that such was the intent of the parties. The complainants proceeded to take possession under the mortgage of the entire property and assets of the firm, to use the trademarks, and to manufacture and sell the medicinal compounds. At the time possession was taken one of the Millers sent for Mr. Morgan and surrendered the keys. Two of the Millers for months after this continued to sell the medicines under the direction of the agent who was carrying on the business for the complainants. The annual royalty due Dr. Haynes the complainants assumed and paid. The defendant, Rogers, as shown by his letters, understood that the complainants had succeeded to all the rights of Miller & Sons and were running the business, He says, however, that in the fall of 1876, after a consultation with the Millers, and after what they said, he took legal advice, and found that the complainants had title under the mortgage only to the goods and effects of Miller & Sons; but that his mind was not clear on the question of the trade-marks is shown by the fact that subsequently, in his conveyance from Miller & Sons, of February 13, 1877, under which he now claims the right to use these trade-marks, there is a provision that if, at the expiration of two years, he should not be in the exclusive enjoyment of the trade-marks in consequence of any act done by the Millers in conveying or encumbering them, then, at his option, the annuities to be paid to the Millers under the agreement were to cease. The fact that the complainants agreed to turn over the property to the Millers after they had been paid cannot operate to divest them of the exclusive right to the trade-marks if they acquired such under the mortgage. With such exclusive right they, as well as Miller & Sons, might hope the debt would soon be extinguished, but without such exclusive right such a result would be most improbable. Upon a proper construction of the clause of conveyance in the mortgage, and upon the evidence showing the intent of the parties, we are satisfied that the relief prayed for should be granted, and that the defendant should be enjoined from the use of the trade-marks. [Supreme Court of the United States.] COOK v. THE SANDUSKY TOOL COMPANY. 1. HICKS'S PATENT-HOES. Decided January 21, 1884. 26 O. G., 1114. Letters Patent No. 189,220, granted April 3, 1877, to O. H. Hicks, for an improvement in hoes, considered. 2. INFRINGEMENT. If an invention made and sold prior to the date of the patentee's invention is not an anticipation, it is not an infringement of it. APPEAL from the circuit court of the United States for the northern district of Ohio. Mr. George N. Howard and Mr. H. E. Paine for the appellant. Mr. Chief Justice WAITE delivered the opinion of the court: The decree in this case is affirmed. If the hoe made by the tool company infringes the patent of the appellant, it was an anticipation of the invention, and the patent is void, for the testimony leaves no doubt whatever in our minds that the company made and sold their hoes long before the date of the invention patented. If it is not an anticipation, it is not an infringement. Affirmed. [United States Circuit Court-Southern District of New York.] TRUSS v. SHUTER ET AL. Decided March 12, 1884. 26 O. G., 1210. GEORGE-BOX-TOE FOR BOOTS AND SHOES. Letters Patent No. 95,894, granted to H. W. George, October 19, 1869, for an improvement in box-toes for boots and shoes, anticipated by Letters Patent No. 69,082, granted to Alfred B. Ely, September 24, 1867. Messrs. P. & D. Mitchell and Messrs. Frost & Coe for the complain ant. Messrs. Henry & F. McCloskey and Mr. John Van Santvoord for the defendants. WALLACE, J.: In view of the shoe-tip patented by Ely, September 24, 1867, there is no novelty in the box-toe patented by George, October 19, 1869. The two articles are exactly alike, and the uses to which they are applied are so analogous that there was no invention by George in placing Ely's tip inside the toe of the shoe, instead of outside, where it was placed by Ely. The bill is dismissed. [United States Circuit Court-District of California.] THE GIANT POWDER COMPANY v. THE SAFETY NITRO POWDER COMPANY ET AL. Decided February 18, 1884. 27 O. G., 99. 1. If a patent is inoperative so far as not to cover all that the party is entitled to claim, it is inoperative within the meaning of the provisions of the statute relating to reissues. 2. The question whether there is a fraud in the surrender and application for a reissue is for the officers of the Patent Office alone to decide, and their determination is conclusive in a collateral proceeding. The court can only examine and pass upon what appears upon the face of the patent, and see whether there is anything to indicate its invalidity or render it void unon its face. All questions of fact behind the patent are to be examined, heard, and conclusively determined by the Commissioner of Patents. 3. Where an original patent is valid, but the reissue based thereon is invalid, there is no good reason why a second reissue embracing the valid claim alone of the original patent would not be valid. 4. The object of a plea, where there is some certain single issue requiring but little evidence that will dispose of the whole case, if sustained, is to try that issue without putting the parties to the expense of the trial of the case at large, and pleas are limited to a single defense or issue, unless by permission of the court the defendants are allowed to plead double: Held, that the plea in this case does not conform to this rule, and besides comes too late. 5. Reissued Letters Patent No. 10,267, issued January 9, 1883, upon the application of Alfred Nobel, to the Giant Powder Company as assignee, for an improvement in explosive compounds, examined and sustained. Mr. George Harding and Mr. Hall McAllister for the complainant. Mr. M. A. Wheaton for the defendants. SAWYER, C. J.: In the case of The Giant Powder Company v. The Safety Nitro Powder Company, a motion for leave to file an amended plea setting up several distinct defenses has been argued in connection with the argument as to the sufficiency of the plea already filed. The Giant Powder Company was the owner of the original patent, No. 78,317. This patent was surrendered and reissued as Patent No. 5,619. Afterward, for the purpose of correcting a clerical error, Patent No. 5,619 was surrendered and reissued as Patent No. 5,799. A suit upon this last patent was decided by Mr. Justice Field in this court, in which it was held that the reissue was broader in its scope than the original invention as described in the patent, the original patent, No. 78,317, being for a combination of nitroglycerine with some non-explosive absorbent material, while the reissue embraced explosive as well as inexplosive absorbents; and Mr. Justice Field held that in that particular the reissue was broader than the original patented invention, and for that reason void. Giant Powder Co. v. Cal. Vigorit P. Co., 6 Sawyer, 509. This being so, Patent No. 5,799 was surrendered and reissued again in Patent No. 10,267; and in Patent No. 10,267 both the specifications and the claim are identical with those of the original patent, No. 78,317, which had before been surrendered and reissued in the patents before mentioned. These facts are set up in the plea, and it is claimed that Patent No. 10,267 is void, it being identical with the original surrendered patent No. 78,317. That patent was surrendered as being inoperative, and as a reissue can only be had where the patent is inoperative it is claimed that the original pent must have been held to be wholly inoperative. I think counsel are mistaken in that proposition. A patent may be inoperative, in my judgment, when it is inoperative in part. I do not think it must be absolutely inoperative in its entirety. If it is inoperative so far as not to cover all that the party is entitled to claim, and what he is entitled to claim appears in the specifications, it being inoperative to that extent, I think it would be inoperative within the meaning of the provisions of the statute, and entitle the party to a reissue. It does not necessarily follow that Patent No. 78,317 was wholly inoperative or void or useless. I am not aware that it has ever been held to be utterly invalid in all its parts. The question of fraud in procuring the reissue, in my opinion, does not arise on this plea, because the question as to whether a mistake has been innocently made in not covering by the patent all that the party was entitled to cover. tion whether there is a fraud in the surrender and application for a reissue is for the officers of the Patent Office alone to decide, and their determination is conclusive in a collateral proceeding. This court can only examine and pass upon what appears upon the face of the patent, and see whether there is anything to indicate its invalidity or render it. void upon its face. All questions of fact behind the patent are to be examined, heard, and conclusively determined by the Commissioner of Patents. This principle has been affirmed over and over again by the Supreme Court. I do not think the fact that the patent was reissued in the identical terms of the original patent, No. 78,317, renders it void. The |