KNAPPEN, Circuit Judge.
This controversy concerns the rights of the respective parties to the use of the trade-mark or trade-name “Black and White,” as severally used by them.
On February 18, Í921, appellant applied for registration of a trade-mark “Black and White” for printed books and pamphlets in series (the first stated use thereof being February 1, 1921), and certificate of registration No. 148,495 was granted her November 15, 1921. On August 25 of that year appellee applied for registration of an alleged trade-mark “Black and White” for books, later amended to read “Black and White for books, namely, almanacs, issued annually, Birthday and Dream Books.” An interference (No. 47,897) was declared between appellant’s registered trade-mark and appellee’s application. The examiner, the Commissioner of Patents, and the Court of Appeals of the District of Columbia having successively held that appellee was not entitled to registration of its mark, the bill in this cause was' filed by appellee under section 4915 of the Revised Statutes (U. S. C. S. 1916, § 9460 [35 USCA § 63]),
praying decree declaring its right to registration and directing issue of certificate thereof. Defendant answered, denying appellee’s asserted right to registration, and counterclaimed for infringement' of her registered trade-mark, asserting unfair competition with respect to her earlier common-law rights. Upon final hearing on pleadings and proofs, the District Court found that plaintiff had not sustained the burden of showing priority of right to use the words “Black and White Series” on almanacs, dream books, etc. The court also held that plaintiff appellee had not infringed appellant’s statutory trade-mark nor her common-law trade-mark or trade-name.
The bill of complaint was accordingly dismissed, as was defendant’s counterclaim upon both branch- , es. Plaintiff did not appeal. This review is had upon defendant’s appeal from dismissal of her counterclaim.
As early as 1900 (apparently in 1902 or 1903), Hennegan & Co., printers and lithographers at Cincinnati, Ohio, began publishing a pamphlet called “Black and White Dream Book,” of an issue bearing a publication date 1900; about one-half was devoted to the “True Interpretation of Dreams” (the subjects of such dreams being alphabetically arranged), the remainder of the pamphlet, being almost entirely given up to the subjects of “palmistry,” “fortune telling,” “curious games of cards,” “Moles,” “telling fortunes by grounds of a tea and coffee cup,” and “signs and omens.” The pamphlet carried no advertisements and bore Hennegan’s imprint. The book took its name from the fact that it was originally put out as “show printing” for one Boone, a “mind reader and hypnotist,” calling himself a “Mahatma,” one of whose “color schemes” (applied to show printing, costumes, and horses used in one of his acts) was black and white. Its subject-" matter was in large part in the language used in “The Gypsy Fortune Teller Dream Book and Treasury of Lucky Numbers,” by “Madam Juno, the Gypsy Queen,” apparently published in 1887. The “Dream Book” was sold by Boone, and after his death by showmen of the same general type, including Galvani and Madame > Frimie, during performances in opera houses and tents.
Until 1912 books of this character were also sold by Hennegan to promoters of mail order business generally. From 1912 to 1919, at least, that company sold the old “Black and White Dream Book” (1900) in large quantities to appellant exclusively, but still under the Hennegan imprint; and from 1919 to 1921 printed in the name of the Van Publishing Company, Cincinnati, of which appellant was proprietor, a “Dream Dictionary,” containing in principal substance the “Dream Interpretations” published in the old Black and White Dream- Book, but omitting the other .features' hereafter enumerated. This “Dream Dictionary” of 1919 to 1921 did not purport to be a Black and 'White publication, nor did it contain the words “Black and White.” Presumably such trade-mark rights as appellant had derived from Hennegan were not intended by appellant to be abandoned. In 1921 Hennegan printed in the name of the Van Publishing Company a series of six volumes, viz.: (1) A “Dream Dictionary,” which was almost entirely a reprint (with exceptions hereafter mentioned) of the Dream Dictionary before referred to as printed from 1919 to 1921; (2) “Marriage” (Nos. 1 and 2 had been prepared between 1919 and 1921); (3) “What is in Your Life;” (4) “The Little Wonder Fortune Teller;” (5) “Character Reading;” and (6) “Magnetism.” All six of these volumes so
put out in 1921 were marked “Black and White Series” at tbe top of both front and back pages, tbe volumes being in both places numbered respectively, from 1 to 6. They carried no advertisements, except one of a so-called “Wizard Fortune Wheel” put out by appellant. Hcnnogan’s Black and White Dream Book had carried no advertisements. These six “Black and White Series” volumes were continuously published from 1921.
Meanwhile, in 1917, and thus before tbe first publication by appellant of a “Black and White Series,” under that imprint, appellee, whose business was that of a manufacturing chemist and manufacturer of toilet preparations, - proprietary medicines and food products, adopted and began to use the label (and alleged trade-name) “Black and White” on its line of medicinal and toilet articles, and possibly other lines, which label it has since continuously used.
In 1919 appellee, as part of an advertising system for the sale of its products, began putting out paper pamphlets, such as “almanacs and dream books,” etc., which it sent to its customers in large quantities, and which tbe latter could give away or sell, as they might prefer — a price of 25 cents being marked on tbe pamphlet. In 1923, and thus six years after appellee began the use of its trade-name “Black and White” as applied to its line of manufactured products, and four years after appellee’s publications began, Hennegan
&
Co. gave appellant a written assignment of the trade-mark (or trade-name) “Black and White.” Hennegan & Co. bad no registered trade-mark.
Appellant asserts that Hennegan
&
Co. actually sold her the trade-mark when she bought tbe goods purchased in 1912. The trial judge, who saw and heard nearly all the witnesses, including appellant, found that “no such assignment was in fact made until the written assignment, which is 1923.” The judge considered that appellant’s use was simply that she bought the 100,000 or less of these Black and White Dream Books,
and disposed of them, and that at that time she had no idea of establishing a trade-mark, and that, in his opinion, she could not in fact have established such trade-mark, because tbe use was neither indicative of excellence of selection, high quality of printing, or any other attribute which she had or which she exercised, as distinguished from the uncopyrighted contents of the book.
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KNAPPEN, Circuit Judge.
This controversy concerns the rights of the respective parties to the use of the trade-mark or trade-name “Black and White,” as severally used by them.
On February 18, Í921, appellant applied for registration of a trade-mark “Black and White” for printed books and pamphlets in series (the first stated use thereof being February 1, 1921), and certificate of registration No. 148,495 was granted her November 15, 1921. On August 25 of that year appellee applied for registration of an alleged trade-mark “Black and White” for books, later amended to read “Black and White for books, namely, almanacs, issued annually, Birthday and Dream Books.” An interference (No. 47,897) was declared between appellant’s registered trade-mark and appellee’s application. The examiner, the Commissioner of Patents, and the Court of Appeals of the District of Columbia having successively held that appellee was not entitled to registration of its mark, the bill in this cause was' filed by appellee under section 4915 of the Revised Statutes (U. S. C. S. 1916, § 9460 [35 USCA § 63]),
praying decree declaring its right to registration and directing issue of certificate thereof. Defendant answered, denying appellee’s asserted right to registration, and counterclaimed for infringement' of her registered trade-mark, asserting unfair competition with respect to her earlier common-law rights. Upon final hearing on pleadings and proofs, the District Court found that plaintiff had not sustained the burden of showing priority of right to use the words “Black and White Series” on almanacs, dream books, etc. The court also held that plaintiff appellee had not infringed appellant’s statutory trade-mark nor her common-law trade-mark or trade-name.
The bill of complaint was accordingly dismissed, as was defendant’s counterclaim upon both branch- , es. Plaintiff did not appeal. This review is had upon defendant’s appeal from dismissal of her counterclaim.
As early as 1900 (apparently in 1902 or 1903), Hennegan & Co., printers and lithographers at Cincinnati, Ohio, began publishing a pamphlet called “Black and White Dream Book,” of an issue bearing a publication date 1900; about one-half was devoted to the “True Interpretation of Dreams” (the subjects of such dreams being alphabetically arranged), the remainder of the pamphlet, being almost entirely given up to the subjects of “palmistry,” “fortune telling,” “curious games of cards,” “Moles,” “telling fortunes by grounds of a tea and coffee cup,” and “signs and omens.” The pamphlet carried no advertisements and bore Hennegan’s imprint. The book took its name from the fact that it was originally put out as “show printing” for one Boone, a “mind reader and hypnotist,” calling himself a “Mahatma,” one of whose “color schemes” (applied to show printing, costumes, and horses used in one of his acts) was black and white. Its subject-" matter was in large part in the language used in “The Gypsy Fortune Teller Dream Book and Treasury of Lucky Numbers,” by “Madam Juno, the Gypsy Queen,” apparently published in 1887. The “Dream Book” was sold by Boone, and after his death by showmen of the same general type, including Galvani and Madame > Frimie, during performances in opera houses and tents.
Until 1912 books of this character were also sold by Hennegan to promoters of mail order business generally. From 1912 to 1919, at least, that company sold the old “Black and White Dream Book” (1900) in large quantities to appellant exclusively, but still under the Hennegan imprint; and from 1919 to 1921 printed in the name of the Van Publishing Company, Cincinnati, of which appellant was proprietor, a “Dream Dictionary,” containing in principal substance the “Dream Interpretations” published in the old Black and White Dream- Book, but omitting the other .features' hereafter enumerated. This “Dream Dictionary” of 1919 to 1921 did not purport to be a Black and 'White publication, nor did it contain the words “Black and White.” Presumably such trade-mark rights as appellant had derived from Hennegan were not intended by appellant to be abandoned. In 1921 Hennegan printed in the name of the Van Publishing Company a series of six volumes, viz.: (1) A “Dream Dictionary,” which was almost entirely a reprint (with exceptions hereafter mentioned) of the Dream Dictionary before referred to as printed from 1919 to 1921; (2) “Marriage” (Nos. 1 and 2 had been prepared between 1919 and 1921); (3) “What is in Your Life;” (4) “The Little Wonder Fortune Teller;” (5) “Character Reading;” and (6) “Magnetism.” All six of these volumes so
put out in 1921 were marked “Black and White Series” at tbe top of both front and back pages, tbe volumes being in both places numbered respectively, from 1 to 6. They carried no advertisements, except one of a so-called “Wizard Fortune Wheel” put out by appellant. Hcnnogan’s Black and White Dream Book had carried no advertisements. These six “Black and White Series” volumes were continuously published from 1921.
Meanwhile, in 1917, and thus before tbe first publication by appellant of a “Black and White Series,” under that imprint, appellee, whose business was that of a manufacturing chemist and manufacturer of toilet preparations, - proprietary medicines and food products, adopted and began to use the label (and alleged trade-name) “Black and White” on its line of medicinal and toilet articles, and possibly other lines, which label it has since continuously used.
In 1919 appellee, as part of an advertising system for the sale of its products, began putting out paper pamphlets, such as “almanacs and dream books,” etc., which it sent to its customers in large quantities, and which tbe latter could give away or sell, as they might prefer — a price of 25 cents being marked on tbe pamphlet. In 1923, and thus six years after appellee began the use of its trade-name “Black and White” as applied to its line of manufactured products, and four years after appellee’s publications began, Hennegan
&
Co. gave appellant a written assignment of the trade-mark (or trade-name) “Black and White.” Hennegan & Co. bad no registered trade-mark.
Appellant asserts that Hennegan
&
Co. actually sold her the trade-mark when she bought tbe goods purchased in 1912. The trial judge, who saw and heard nearly all the witnesses, including appellant, found that “no such assignment was in fact made until the written assignment, which is 1923.” The judge considered that appellant’s use was simply that she bought the 100,000 or less of these Black and White Dream Books,
and disposed of them, and that at that time she had no idea of establishing a trade-mark, and that, in his opinion, she could not in fact have established such trade-mark, because tbe use was neither indicative of excellence of selection, high quality of printing, or any other attribute which she had or which she exercised, as distinguished from the uncopyrighted contents of the book.
Appellee, not having appealed from tbe decision of the court below, denying its asserted right over appellant to use the words “Black and White” as applied to a' series of books, is bound by that decision, and, in the view we take of the question of infringement, we find it unnecessary to determine whether appellant bought Ilennegan’s trademark in 1912.
1. Appellee contends that appellant was anticipated by Harper & Bros, in the use of tbe trade-mark “Black and White,” as applied to their well and widely known series of books published under the trade-name “Black and White Series” (the series seems at one time to have included about 23 titles), which trade-mark or trade-name was purchased by appellee May 22, 1924, during tbe pendency of the trade-mark interference proceedings between appellant and appellee.
Tbe court below, while of opinion that appellee gained by such purchase no right superior to Nieman’s to the ownership or registration of this alleged trade-mark, expressed the opinion that there was sufficient evidence to convince the court of the fact of anticipation on the part of Harper
&
Bros., and that their common-law trade-mark was still in existence and still active, and still representative of some good will, at the time the registration was granted to Nieman, and that for that reason, among others, appellee had not infringed appellant’s alleged trade-mark. We see no inconsistency between tbe failure to recognize the Harper use as available to appellee in support of
its
attempted trademark registration, and the conclusion that the defense <Jf such Harper use was available as against a charge of infringement.
If tbe
trial court’s conclusion of fact is right, its conclusion of law would seem to follow.
If the testimony of the witness Lewin, taken by appellee under the federal statute relating to depositions de bene esse, was properly in evidence, we think the record supports a conclusion that the Harper use of the trademark “Black and White Series” began in 1885 (as recited in the assignment to appellee), and was still active and still representative of substantial good will at the time of Harper’s sale to appellee in 1924. The witness Lewin, who when his deposition was taken
(February, 1926), was organization manager of Harper & Bros., and had been continuously associated with that house for 39 years, testified, in substance, that the Black and White Series started originally with “just a single volume [title?] of the
series,
or perhaps one or two in the series, and then we have added from, time to time various titles” thereto; that Howell’s “The Garrotera” formed a part of this series in 1885; that the
series
was continuous; that the first edition of “The Garrotera” was published in 1885, and the last edition in 1917; that in the case of three other titles editions have been published as late as 1922, and that all four of the titles mentioned were, when the deposition was taken, still in the live, active files of the Harper house and open to sale to an applying purchaser. A witness testified to the purchase from different booksellers, in different locations, in 1925, of several different books of Harper’s “Black & White Series”— 30 or 40 copies in all. To say the least, the question of abandonment, of the Harper trade-mark was one of intent. Baglin v. Cusenier, 221 U. S. 580, 597 et seq., 31 S. Ct. 669, 55 L. Ed. 863. Saxlehner v. Eisner, 179 U. S. 19, 31, 21 S. Ct. 7, 45 L. Ed. 60.
The deposition in question was taken under Revised Statutes, § 863 (U. S. C. S. § 1472 [28 USCA § 639]) which relates to the taking of testimony de bene esse, of witnesses (as applied to this case) residing more than 100 miles from the place of trial.
The regularity of the taking and return of Lewin’s deposition is important; we doubt whether without it the record carries the Harper use back far enough to anticipate that of appellant. We find nothing in the record which, to our minds, renders the deposition inadmissible.
2. But even if the asserted Harper prior use be wholly disregarded, and assuming, for the purposes of this opinion, that appellant’s registered trade-mark is valid, and that the District Court had jurisdiction over the subject-matter of appellee’s counterclaim as applied to appellant’s trade-mark, we think appellee has not infringed.
Whether the common-law trade-mark in a “Blaek and White Dream Book,” sold by appellant under Hennegan’s imprint from 1912 until 1919, belonged to Ilennegan or appellant, appellee had equally the right to adopt and use the registered trade-mark “Black and White” for its maufaetures of patent medicines, chemical and toilet articles, etc. — all of which were in a different class from “Dream Books” — and to advertise its manufactures accordingly. We have no doubt of the validity of appellee’s common-law trade-mark “Blaek and White” as so applied.
This, however, involves no necessary conflict between appellant’s registered trade-mark “Black and White Series,” or “Black and White,” as applied to her series of pamphlets, and, on the other hand, appellee’s trade-mark “Black and White,” as applied to its medicines and toilet preparations. In 1921 appellant was not new in the field with a, “Dream Book” or “Dream Dictionary.” She had published no almanac. As testified by her witness, there is a large number of various “Dream Books” and “Dream Dictionaries” put out to the public.
The question of infringement turns upon the fact whether appellee has used its own trade-mark in such manner that casual and unwary purchasers of average intelligence were, or were likely to be, deceived into the belief that appellee’s publications were put out by appellant. 26 R. C. L. title “Trademarks,” § 51; McLean v. Fleming, 96 U. S. 245, 251 et seq., 24 L. Ed. 828; Hutchinson v. Loewy (C. C. A. 2) 163 F. 42; Werk v. Grosberg (C. C. A. 6) 250 F. 968; Hercules v. Newton (C. C. A. 2) 266 F. 169, 174; Rathbone v. Champion Co. (C. C. A. 6) 189 F. 26, 30, 37 L. R. A. (N. S.) 258; “The en
tire substantive law of trade-marks (excepting statutory provisions and construction) is a branch of the broader law of unfair competition. The ultimate offense always is that defendant has passed off its goods as and for those of complainant.” Merriman v. Saalfield (C. C. A. 6) 198 F. 369, 372; and cases there cited; Hanover v. Allen (C. C. A. 7) 208 F. 613, L. R. A. 1916D, 136; Howe v. Wyckoff, 198 U. S. 118, 140, 25 S. Ct. 609, 49 L. Ed. 972; Hanover v. Metcalf, 240 U. S. 403, 413, 36 S. Ct. 357, 58 L. Ed. 468; cf. DeVoe v. Wolff (C. C. A. 6) 206 F. 420, 423. The fact that appellant’s trade-mark is registered works no change in this rule. Nashville Co. v. Coco Cola Co. (C. C. A. 6) 215 F. 527, 529, Ann. Cas. 1915B, 358; Gaines v. Distilling Co. (C. C. A. 6) 226 F. 531, 541, reversed on another point, 246 U. S. 312, 38 S. Ct. 327, 62 L. Ed. 738, cf. Delaware & Hudson Canal Co. v. Clark, 13 Wall. 311, 323, 20 L. Ed. 581.
We think appellant has no ground .to complain that appellee has appropriated any literary property of appellant. Atlas v. Street (C. C. A. 8) 204 F. 398, 402, 47 L. R. A. (N. S.) 1002. Appellee’s alleged infringing publications are:
(1) “Plough’s Black and White Almanac,” the issues before us being respectively for the years 1920, 1922, 1923, 1925, and 1926,
each entitled on its face “Plough’s Black and White Almanac” for the then current year, that for 1920 bearing on its face the legend “Copyright applied for,” etc, that for 1922 bearing the additional words “Interesting information, astrological data, reliable calendar, weather forecast,” and those for 1925 and 1926 the words “and Beauty Book,” following the'words “Plough’s Black and White 1925 (or 1926) Almanac.”
Appellee had the right to use the trademark “Black and White” as applied to its goods. Appellant had no such right and no such goods. It had only the right (which appellee did not have) to use the trade-mark as applied to a series of books. At the head of each cover page of each of appellant’s books of that series were the words “Black and White Series.” Appellee’s boobs nowhere contained any reference to a series. To sustain a charge of infringement of a trade-mark the owner must have used it on the same class of goods put out by the alleged infringer, but not necessarily on the same species of goods. Atlas v. Street, supra. Each of these almanacs is, we think, on its face plainly put out as an advertisement of appellee’s manufactures of toilet articles, chemical and medicinal preparations.
Each eontaiñs numerous and frequent advertisements of appellee’s manufactures; its almanacs contain also monthly calendars, weather forecasts, zodiacal signs, and other features of the general character found in medical almanacs for more than fifty years past.
(2) Appellee’s “Black and White Birthday and Dream Book,” each of the two issues of which carries on its front cover the name above given, the first issue
(1919 or
1920), bearing also on the front cover the words “The twelve monthly birthday readings for the year, the true meaning of your dreams, daily guide- for business and pleasure for 1920, price 25 cents. Copyright applied for,” and on the back cover a full-page advertisement of “Plough Chemical Company, Manu-' factoring Chemists, Memphis, Tenn.”; the second issue (1921 to 1922) carrying on its front cover the words “Plough’s Black and White Birthday and Dream Book,” followed by the imprint, in the form of a seal, reading “Plough’s Black and White Toilet Preparations, the symbol of excellence in toilet preparations,” also the name and address of “Plough Chemical Company, Memphis, Tenn., U. S. A.,” the back cover page being devoted exclusively to a greatly enlarged copy of the imprint in seal form already mentioned. In addition to advertisements of Plough’s manufactures on nearly every page, the first issue contains a “Daily astro guide” for 1920, birthday readings for each month in succession, the daily guide for business and pleasure referred to, one page being devoted to the “true meaning of your dreams,” some of which are the same as in Hennegan’s “Black and White Dream Book,” whose origin has already been referred to. The general character of the contents of the'second issue does not differ materially from that of - the first.
(3) In some other publications by appellee there was included information which we think contains nothing more significant than the publications already described. These include “The Story of Tour Face and Its Meaning to Others,” embracing (on its first page) a price list of appellee’s manufactures, 'later, “What Different Eyes Indicate,” “Reading Character by the Color of the Eyes,” “Disposition by the Shape of the Nose,” .“Reading Character by the Form of the Lips,” “Read
ing Character by the Shape of the Bar,” and we think show clearly to the most casual observer, from the first page to the last, that it is merely an advertisement of appellee’s manufactures. The same thing is, we think, equally true of appellee’s song book, published in 1920, which contains numerous prominently displayed advertisements of appellee’s various manufactures. Appellee’s seal is therein represented, printed one-half in white letters on a black background, the other half in black letters on a white background (in connection with different of appellee’s manufactures), as was the case in the Moore Black and White trade-name for soap purchased by appellee. This trade-name and seal is prominent and distinctive. These various publications seem to consist of about 40 per cent, advertisements and about 60 per cent, other reading matter. As respects none of appellee’s publications do we think even casual and unwary readers of average intelligence were liable
to be
deceived
into the
belief, that they were put out by appellant, or that appellee has in any way palmed off its advertising matter as part of appellant’s Black and White Series of books, etc. So far as concerns dress, we see an entire absence of reasonable room for confusion. We are cited to no testimony that any one has been deceived into interpreting any of appellee’s publications as those of appellant.
Appellant’s brief refers to alleged copyright infringement. That subject requires little attention. There is no evidence that the 1900 Black and White Dream Book was copyrighted. Hennegan thinks it was not. That leaves for consideration only appellant’s six volumes of the “Black and White Series.” We doubt whether the District Court had jurisdiction, under the counterclaim, over that subject (or whether it was intended by appellant to consider it), except as involved in the general subject of unfair competition. However, in view of the earlier publications referred to, we find nothing in the last-mentioned volumes sufficiently new and material to call for copyright relief.
Of the claim that appellee substantially copied into its 1922 almanac a paragraph of 10 or 11 lines found in appellant’s “Dream Dictionary” under the heading “Philosophy of Dreams,” it seems sufficient to say that it cannot alter the conclusion of lack of trademark infringement or unfair competition.
The criticism upon the caption on the inside cover of appellee’s Black and White Dream Book impresses us as without merit. [10] We cannot construe the evidence— claimed as tending to show a falling off of appellant’s sales more or less coincidental with appellee’s advertising — as any evidence of misleading on appellee’s part. The mere fact, if it be such, that appellee’s lawful pamphlet advertisements (owing to their being in many cases given away or otherwise) have lessened the demand for appellant’s publications presents no legal or equitable grievance.
We have not discussed all the errors assigned, but we have considered all, and find no reversible error. The rejected stipulation as to testimony has been considered by ns. If the views herein expressed are correct, it seems clear that appellant is not entitled to complain of infringement of its trade-mark, or unfair competition with reference to it.
It results, we think, from what we have said, that appellant is entitled to no relief. It follows that the decree of the District Court must be affirmed.