## Facts

- Three federal criminal prosecutions were consolidated: *United States v. Steffens*, *United States v. Wittemann*, and *United States v. Johnson* (with others).
- Defendants were charged under the Act of Aug. 14, 1876, which imposed criminal penalties for counterfeiting registered trademarks and dealing in goods bearing counterfeits.
- The alleged counterfeits involved marks used on champagne (two cases) and whiskey (one case).
- Each case reached the Supreme Court on a certificate of division from federal circuit courts after defendants filed general demurrers to the indictments.
- The central dispute was whether Congress had constitutional authority to enact the 1876 trademark registration and criminal enforcement scheme.

## Issues

1. Whether trademarks fall within Congress’s power under Article I, § 8, cl. 8 to protect “authors and inventors” in their “writings and discoveries.”
2. Whether the 1876 trademark statute was a valid exercise of Congress’s Commerce Clause power.
3. Whether the statute’s reach could be confined to commerce within federal control (foreign, interstate, or Indian-tribe commerce), or instead impermissibly covered intrastate commerce.

## Decision

- The Court unanimously held the 1876 trademark statute unconstitutional and rejected the indictments based on it.
- The Court held trademarks are not “writings” or “discoveries” and therefore cannot be federally protected under the Copyright/Patent Clause.
- The Court held that, even assuming Congress may regulate trademarks in interstate and foreign commerce, the 1876 act was invalid because it was drafted to apply broadly to all commerce, including purely intrastate transactions.
- The Court declined to salvage the statute by narrowing construction and treated the statutory scheme as void for lack of constitutional authority.

## Legal Principles

- Trademarks, though a form of property protected by common law and state law, are not within Article I, § 8, cl. 8’s categories of “writings” or “discoveries.”
- Federal trademark regulation, if authorized at all, must be tied to an enumerated power; for commerce-based regulation, it must be limited to commerce with foreign nations, among the states, and with Indian tribes.
- A federal statute that by its terms applies to intrastate commerce exceeds Congress’s commerce power and is unconstitutional when it cannot be confined to matters within federal control.
- Invalidation of an unconstitutional federal trademark statute does not eliminate trademark rights, which may exist and be enforced under state law and common-law doctrines.

## Conclusion

The Court struck down Congress’s 1876 trademark criminal-enforcement regime because trademarks are not protectable under the Patent/Copyright Clause and the statute was not limited to interstate or foreign commerce, leaving trademark protection primarily to state and common-law mechanisms absent a properly bounded federal law.


Trade-Mark Cases, 100 U.S. 82 (1879)