The decree of the District Court for the Eastern District of Missouri, directed by the decision of the United States Circuit Court of Appeals for the Eighth Circuit, is pleaded in bar, and whether it is such depends upon the issues that were made or passed upon in those courts.

The bill of complaint in the case alleged that in 1835 one James Crow (he is the James Crow of this suit) invented and formulated a novel process for the production of whisky which he did not patent or seek to patent but kept for his own use until his death in 1855.

During all of the time after 1835 the whisky so produced was known and styled as 'Old Crow' whisky and the designation was adopted and used as a trade-mark.

After the death of Crow one William F. Mitchell, to whom Crow had communicated his secret process, continued the distillation so designated and in 1867 a partnership, styled Gaines, Berry & Co., obtained possession of the distillery wherein the whisky distilled by the indicated process continued to be produced by the same process until the partnership was succeeded by W. A. Gaines & Co., and the latter company succeeded also to all of the partnership assets of the other and continued to produce the whisky until the incorporation of the complainant, when all these assets were acquired by it.

When the name 'Old Crow' was applied by Crow it was a valid trade-mark and since its adoption it has always been applied to the whisky produced by the indicated secret process, and since that time has indicated to the public whisky distilled on Glenn's creek, in Woodford county, Kentucky, and nowhere else.

Complainant caused the same to be registered in the Patent Office under the provisions of the act of Congress so providing. The value of the trade-mark is $500,000 and an integral part of the good will of complainant's business and the whisky is of greater value than any other of equal age.

Since January, 1903, the defendants, in violation of complainant's rights and good will, have made or caused to be made and sold in the city of St. Louis a certain spirituous or alcoholic fluid not made under complainant's process and have labeled it with the words 'Old Crow' without license from the complainant and against its consent. Such unlawful u e will greatly lessen the value of complainant's business and good will, and complainant is without adequate remedy at law.

There was the usual prayer for an accounting and an injunction.

There was a supplemental bill to the same effect, but charging that A. M. Hellman & Co. had become the successors of the original defendants and had continued the acts alleged in the original bill.

To the bill the defendants answered, with denials, and alleged the use of the word 'Crow', 'Old Crow' and 'J. W. Crow' in connection with their own business upon packages of whisky and in their and their predecessor's business from 1863 and prior thereto; that the whisky sold by complainant was an unrefined, harmful and deleterious article and that the whisky sold by them was a brand largely free from impurities.

The defendants also filed a cross-bill which, however, was not insisted upon.

These, then, were the issues, and upon them and the evidence adduced to sustain them the Circuit Court entered a decree establishing complainant's right to the word 'Old Crow' as a trade-mark, enjoined the use thereof by defendants and found them guilty of unfair competition in business and ordered an accounting. The Circuit Court of Appeals reversed the decree.

The latter court made a careful review of the evidence, denominating it a mass of the relevant and irrelevant, and felt that it was not necessary to consider the comparative excellence of the whiskies, and remarked that the evidence did 'not show that Glenn's creek in any way entered into the composition of the whisky' and that 'there was no secret about the process employed by Crow nor did it differ materially from that employed by every other distiller of the same period.' To the objection that the 'designative words' were rarely used by the Hellmans and that their product was of inferior quality, the court replied that the right to use could not be measured by the extent to which the Hellmans employed it, 'whether more or less frequently,' nor 'by the overshadowing comparative amount of the complainant's [Gaines & Co.'s] sales under the designation 'Old Crow' whisky, nor by asserted superiority of its product.'

'(1) That inasmuch as the defendants' predecessors in business prior to the use or the adoption of the designative word 'Crow' or the words 'Old Crow' as a trade-mark, employed those words in descriptive terms in connection with their business as dealers in whisky in St. Louis, Mo., and said predecessors and the defendants so continued to use the same, to a limited extent, up to the time of the institution of this suit, in good faith, they are not guilty of infringing the complainant's claimed trade-mark; and (2) that the defendants are not guilty of having engaged in unfair competition with the complainant in the prosecution of their business.'

It will be observed that the issues in that case were the same as those in the present case as to the right to the use of the word 'Crow' with any of its qualifications. But in this case there is another ground of recovery alleged; that is, the application for and the receipt of the certificate of registration for the word as a trade-mark for straight rye and straight bourbon whisky. The District Court, however, adjudged that the decree of the Circuit Court in Missouri and its affirmance by the Circuit Court of Appeals constituted a bar to this suit. To the judgment of the Circuit Court of Appeals of the Sixth Circuit, reversing the action of the District Court, this certiorari is directed.

The Circuit Court of Appeals, however, did not yield to all of the views of the Gaines Company. It refused to decide, as urged to do, that the defendants in this suit were not in privity with the defendants in the other and it rejected the contention that the use of the trade-mark established in the Hellman Company for a blended whisky was not an adjudication of the right to use it upon a straight whisky. In the rulings on both contentions we concur. Th first needs no comment; we adopt that of the court on the second. The court said that:

'Whatever the extended classifications and subclassifications of the Patent Office practice may contemplate, neither the common law nor the registration statute can intend such confusion as must result from recognizing the same trade-mark as belonging to different people for different kinds of the same article. Established trade-marks directly indicate origin; but if they have any value, it is because they indirectly indicate kind and quality; and to say that the seller of a blended whisky might properly put upon it a mark which was known to stand for a straight whisky, or vice versa, would be to say that he might deceive the public not only as to the origin, but also as to the nature and quality, of the article.'

The philosophy of this might be questioned. But it seems to have become established, and, however it may be disputed in reason, there is an opposing consideration. As said by Circuit Judge Sanborn in Layton Pure Food Co. v. Church & Dwight Co. (C. C. A.) 182 Fed. 35, 39, 104 C. C. A. 475, 479 (32 L. R. A. [N. S.] 274):

'Uniformity and certainty in rules of property are often more important and desirable than technical correctness.'

And this reasoning prevailed with the Circuit Court of Appeals which, after citing cases, said that it was forced to think 'that whatever was adjudicated regarding complainant's title to the trade-mark applies to its use of both kinds of whisky.' And, of course, conversely we may say that whatever was decided against its title to its trademark applies to its use on both kinds of whisky. In other words, if defendants were adjudged to have title to the words 'Crow' or 'Old Crow' on blended whisky, they have a right to use it on straight whisky without infringing any right of complainant. We came back, therefore, to the question as to what was adjudged in the prior suit.

To this question the Court of Appeals of the Sixth Circuit gave great care and in an opinion of strength decided the negative of it. The court, in concession to the argument, assigned a prior use to the Hellmans, but expressed the view that the existence of such 'general or prima facie exclusive right is not inconsistent with an inability to enforce it against some persons and under some circumstances.' And it was added:

'Instances may arise where the affirmative conduct or the laches of the first appropriator, and with reference to what he was at first entitled to call an infringement, has been such that on the principles of estoppel or the rule of laches a court of equity cannot tolerate that he should enforce against the later user the right which might have been originally perfect. * * * Under these considerations and upon reference to the pleadings and the proofs in the Hellman Case, we conclude that the latter case is of the class where the refusal to give an injunction to the first appropriator of the mark may be justified upon the ground of his laches or estoppel; and so this ground of support must be considered in determining what is the true basis of that decree.'

The court hence concluded that it, the decree, did not adjudge title to the Hellmans but adjudged them a 'defensive right and nothing more,' and, explaining the right, the court said that it 'does not extend to any whisky not mixed or blended so as to be of the same general type as that to which defendants [Hellmans] had been making or to trade or territory in which they were not selling when the bill was filed.'

We are not able to assent. The court admitted that the language in the body of the opinion of the Circuit Court of Appeals for the Eighth Circuit is consistent with the interpretation petitioners put upon it, that is, 'that the trade-mark, in its general, prima facie, affirmative aspect, belonged to the Hellman's prior appropriation'; but the court added that the last paragraph of the opinion indicated 'that the two judges (only two sitting) did not unite in pu ting the decision on that ground.' We think this was an oversight. The opinion was that of the court, though delivered by one judge, and the conclusion was the conclusion of the court, and necessarily had to be, else there would have been no decision or decree. And it was thoroughgoing. It is manifest from the excerpts we have made from the opinion that the judgment of the court was not limited as to time or territory; nor did the pleadings so limit it. The complainant in that case (respondent here) alleged that it was the sole and exclusive owner of the trade-mark and had used it from 1835 to the present time, being virtually the successor of the first producer of the product.

Defendants (petitioners) contested the claim and asserted a right in themselves based on prior adoption and continuous use, and that right was adjudged to them.

Decree of the Circuit Court of Appeals reversed and that of the District Court affirmed.