Chapter I: Front Matter

Transcriber's Notes:

Text enclosed by underscores is in italics (_italics_), and text enclosed by equal signs is in bold (=bold=).

Many illustrations contain text, which is marked by indenting it more than the illustration captions.

Additional Transcriber's Notes are at the end.

* * * * *

THINGS TO KNOW ABOUT TRADE-MARKS

A MANUAL OF

_Trade-Mark Information_

PUBLISHED BY

J. WALTER THOMPSON COMPANY

44 EAST 23rd STREET

NEW YORK

_Branch Offices_

CHICAGO CLEVELAND ST. LOUIS TORONTO

BOSTON CINCINNATI DETROIT LONDON

* * * * *

COPYRIGHT, 1911

BY J. WALTER THOMPSON COMPANY

* * * * *

J. WALTER THOMPSON COMPANY
Est. 1864

]

The Purpose of This Book

Our idea, in preparing this little book, is to set forth, in clear and simple language, the main features of the law relating to trade-marks and to illustrate its application by specific examples of well-known trade-marks now in use.

To an advertiser who has had but little experience in registering trade-marks, the law, with a congested mass of precedents surrounding it, seems to be a legal maze.

But its intricacy is more apparent than real. The law is quite clear and explicit when one has the patience and experience in such matters to get to the bottom of it. We have endeavored to write this book in language so clear that any business man will understand it, and we feel sure that it will give any one a good working knowledge of trade-mark requirements.

It has not been our intention to produce an exhaustive treatise on the subject. Such a treatment of the law of trade-marks and its allied subject of unfair trade would require a large volume, and the long and intricate discussion of minor points necessary in a work of that kind would be wearisome and perhaps unintelligible to the lay reader.

Nor have we discussed the origin of the custom of identifying merchandise by trade-marks. This phase of the subject--trade-marks in their historical aspect--is interesting in an academic sense, but it has little or no bearing on the trade-mark situation of to-day.

For further study of the trade-mark law and the allied subject of the law of unfair trade, we advise the reading of Hesseltine's "Law of Trade-Marks and Unfair Trade" (Little, Brown & Co., 1906); and Nims on "Unfair Business Competition" (Baker, Voorhis & Co.). Both of these works are legal in their treatment of the subject and in their phraseology. Another work containing much information on this subject is Clowry Chapman's "Law of Advertising and Sales", in two volumes, published by the author.

J. WALTER THOMPSON COMPANY

PRESIDENT.

Table of Contents

Chapter Page

Introduction 7

I. Digest of The Trade-Mark Law 13

Property in Trade-Mark Rests Upon Common Law 13

Conditions of Registration 14

Ten-Years Clause 16

How to Apply for Registration 17

Procedure of the Patent Office 20

Registration in Foreign Countries 23

Classification of Merchandise 23

State Trade-Mark Laws 25

II. Essentials of a Valid Trade-Mark 26

Portrait of a Living Individual--When it may be
Registered 27

Trade-Mark Must not be Descriptive 28

Trade-Mark Must not Misrepresent 31

Trade-Mark Must not Resemble Previously
Registered Mark for Same Class of Merchandise 32

A Geographical Name is not Registrable 34

Trade-Mark Must not Contain Red Cross Insignia 36

Restrictions as to Registering Names 37

Trade-Mark Must not be Fraternal Society Emblem 39

Trade-Mark Must not Consist of Flag or Coat-of-Arms 40

A Form, Color, a Shape, or a Material Not Registrable 40

Trade-Mark Must not be Against Public Policy 42

Affixation 43

III. Advertising Characters 45

IV. Infringement 52

V. Assignment 69

VI. Trade-Marks in Canada 73

VII. How to Devise a Trade-Mark 76

Introduction

If you were to ask any dozen men among your acquaintances, or any hundred men, to name the greatest writer that has ever lived, the odds are perhaps as great as a hundred to one that every man would say "Shakespeare."

This virtual unanimity of opinion would not have its origin in a conscious comparison of authors and their works, for we might as well be frank with each other and admit that not more than one of us in a thousand has ever read enough of Shakespeare to form any opinion that would be worth listening to.

We take Shakespeare on faith.

We have been taught that Shakespeare was a transcendent genius, the greatest man that ever put pen to paper, and we believe it.

Shakespeare is in evidence on every hand. We quote him every day. He is well advertised. And, needless to say, his reputation as a writer is far greater to-day than when he lived over a wig-maker's shop in London, or even when his fortune had been made, and he had retired with his jig-saw coat-of-arms to the "lordly mansion" on the hill back of Stratford.

He has been advertised for three centuries with praise originating from a thousand sources, and his reputation is now steeped head and ears in Cumulative Results.

Shakespeare's name has become a sort of trade-mark of good literature. If a meddling antiquarian should thoughtlessly add to the afflictions of the intellectual life by unearthing a doggerel sonnet of Thomas the Rhymer to which some clerkly scribe had affixed, in error, the name of William Shakespeare, learned men would read it, and nodding wisely, would doubtless say, "Pretty good stuff"--or the scholarly equivalent of that phrase.

The force of _recognized distinction_ is tremendous, not only in literature, but in business, in science--in short, it is one of the most valuable assets in every field of human endeavor.

A commodity may attain a height of distinction, in the public's estimation, that places it, among other commodities of its class, on the level attained by Shakespeare in literature.

Apollinaris among table waters; Heinz "57" among pickles; Hartshorn rollers among window shade appliances; Coca-Cola among soda fountain drinks; Huyler's among candies; Uneeda Biscuit among soda crackers; Horlick's among malted milks--each of these products has become, by reason of advertising combined with intrinsic merit, the standard of quality in its own class.

It is interesting and easy to make practical tests to ascertain what advertised commodities have made a genuine and far-reaching impression on the buying public.

Take talcum powder, for example.

Ask your wife, daughter, sister, stenographer--and as many other women as are necessary to strike a general average--to write down the name of what each of them considers the standard talcum powder. Then, when all the returns are in, figure up the result. There are hundreds of brands of talcum powder sold in the United States; but you will find in your canvass that only three or four are mentioned at all, and that one of them leads all the rest by a decisive majority. We could tell you what the figures produced by your experiment would show the leading brand to be, but a modest reserve in self-assertion forbids us to say more than that its name begins with the letter M.

The enviable position of this particular talcum powder is the sum total of many years' advertising and trade-mark publicity. It has become a permanent feature of our commercial life; a sort of Bunker Hill in the history of advertising. The natural result is that its trade-mark is enormously valuable.

Advertising capitalizes human faith, and faith is a mental impression. It is a quality of the human mind that the most _profound impressions are made by things_--not by abstract ideas. Consequently, successful advertising must be tied hard and fast to a name (or trade-mark) and this trade-mark must be distinctive, and not easy to confuse with something else. It must be easy to remember, _and it must identify the advertised product_.

The functions of a trade-mark in advertising may be concisely stated as follows:

1st. As a certificate of genuineness of the product to which it is
affixed. _This protects the public._

2nd. As an identifying mark, owned by the manufacturer, and in the
ownership of which the law protects him in order that no competitor
may reap the advantage of the selling effort and advertising
put forth by the owner of the trade-mark. _This protects the
manufacturer._

In its legal aspect, a trade-mark is therefore a device for protecting both the manufacturer and the public from fraud. In this connection, we quote the legal definition of a trade-mark as given by the Federal Court in the case of _Shaw Stocking Company vs. Mack_:

"Broadly defined, a trade-mark is a mark by which the wares of the
owner are known in trade. Its object is twofold; first, to protect
the party using it from competition with inferior articles; and
second, to protect the public from imposition.... The trade-mark
brands the goods as genuine, just as the signature of a letter stamps
it as authentic."

The law of trade-mark usage, reinforced by a vast array of legal decisions, is a growth of the last sixty years.

When trade was restricted within narrow geographical limits by formidable conditions; when both goods and news traveled slowly; when selling effort was principally made by word of mouth, there was no genuine need in the commercial world for the legal regulation of trade-marks, or for laws designed to repress unfair trade.

In the days of our forefathers manufacturers made goods; they did not sell them. Goods sold themselves. And, consequently, the expanding circle of a manufacturer's trade rippled out with exceeding slowness. A national sale of any product was the result of perhaps several generations of slowly expanding effort--and when once established, it was generally entrenched far beyond the reach of competitors or substitutes. People lived simply, and manufactured articles were few. It is true that trade-marks existed then--as they have since the beginning of organized commerce--but they were few in number, compared with their multiplicity to-day, and their owners were adequately protected by their ordinary common law rights.

Quickly moving transportation and highly developed methods of distribution and sale have changed these conditions.

To-day the swift shuttle of commerce flies to the ends of the world. Advertising has arisen, and has become, in a generation, the most important of selling forces. People read and believe the printed word, and they buy goods manufactured a thousand miles away by some advertiser of whom they had never heard until they read of him and his wares. Society has become intricate and complicated. Thousands are striving to do what one man strove to do a hundred years ago.

From this criss-cross of human activities has been woven the fabric of the law of unfair trade, which is the progenitor of the trade-mark statutes. The intent of this body of law is to give the widest possible freedom to the play of individual energy in business consistent with justice to others in trade, and to the public.

The trade-mark is the connecting link between the manufacturer and the ultimate consumer. By the use of trade-marks, widely advertised, manufacturers are able to build up a trade that becomes, to a great degree, independent of jobber, wholesaler, and retailer. In the public mind a trade-mark grows, in time, to mean a certain standard of quality, workmanship and material.

Advertised products are generally higher in quality than similar products that are not advertised. The reason is that an investment in enough advertising space to make any commodity known nationally requires a considerable outlay of money, besides a well-developed selling organization to coöperate with the advertising, and harvest its results. And this must be done continuously, and that means that the combined advertising and selling effort must be permeated with a sense of stability and permanency.

The manufacturer who is investing money in advertising, year after year, feels that he has too much at stake to endanger his possibilities by putting out inferior goods. Advertising is a systematic method of creating Good Reputation--but when Reputation is only an empty form of words, with nothing tangible behind it, the chances of its lasting are rather slight.

The manufacturer of inferior goods is not looking very far into the future. He is not trying to build permanently on the basis of reputation, but to squeeze out Right Now every cent of possible profit. The result of this attitude of mind is that he does not advertise.

Consequently it is not surprising to find that the best merchandise on any retailer's shelves consists of advertised goods, and that, moreover, concerns that advertise have the most efficient sales organizations, as well as the most enlightened relations with retailers and the public.

The best trade-mark ever devised is not worth a cent until it has become known as an identifying mark of a commodity. A trade-mark has no inherent, natural value. Whatever it is worth is the result of advertising in some form, plus the desirable qualities of the goods that it represents.

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Some trade-marks are words which have a natural affinity for the language, and they slide into common speech as easily as a cupful of water melts into the ocean.

A notable instance of this is "Cracker Jack." This word has become an integral part of our common language, and is used to mean a hustler, a thing of excellence, a fellow who gets there, a machine that runs smoothly, a well-played game, and in other senses. But it is probable that not one person in a hundred who uses this word knows that it is a registered trade-mark, and that it is a name applied to a mixture of popcorn and peanuts, combined with molasses, or some other sweetening. It is a delicious concoction, as any reader of this book may ascertain for himself.

The owners of Cracker Jack have not advertised. They have allowed the immense asset of their trade-mark--a by-word on the tongues of millions--to go to waste.

The word "Celluloid" is protected by the trade-mark law. The article celluloid can be manufactured by any one who cares to go into the business of making it, but only the owners of the trade-mark can call their product celluloid. This is not generally known, probably not even by the well-informed class of readers among whom this book will circulate--a state of public ignorance due to lack of advertising.

"Kodak," an artificial word--a registered trade-mark--widely advertised, has grown into common use, and is now used by many persons to mean a small hand camera of any make, though (as every reader of this book knows) a real Kodak is made only by the Eastman Company.

In this case the owners of the trade-mark have made their advertising keep pace with the diffusion of the word.

+---------------------------------------------+
| "KODAK" |
| |
| Is our Registered and |
| common-law _Trade-Mark_ |
| and cannot be rightfully |
| applied except to goods |
| of our manufacture. |
| |
| If a dealer tries to sell you a camera |
| or films, or other goods not of |
| our manufacture, under the Kodak |
| name, you can be sure that he has an |
| inferior article that he is trying to |
| market on the Kodak reputation. |
| |
| _If it isn't an Eastman, it isn't a Kodak._ |
| |
| EASTMAN KODAK CO., |
| |
| ROCHESTER, N. Y., _The Kodak City_. |
+---------------------------------------------+
_Special advertising to counteract the
indiscriminate use of the word "Kodak."_

It is easier to say Kodak than it is to say "portable camera". There is a real need in the language for such a word, and "Kodak" has come to supply it.

Trade-marks of this character, which seem to supply a genuine linguistic need, are, in a sense, _too good_. The indiscriminate application of "Kodak" to a certain class of cameras, irrespective of origin, has caused the Eastman Kodak Company to publish many advertisements with the special purpose of calling attention to the correct use of the word.

The word "O'Sullivan" is another instance of a trade-name acquiring a secondary meaning through advertising. It instantly brings to mind the thought of rubber heels. In a popular play an actor says, "I got away from there on my O'Sullivan's" and every one in the audience knows that he means to say that he left as quietly as he could.

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There comes a time, in the history of every manufacturer who advertises extensively and successfully for a long period, when his trade-mark, and the name of his product (in many cases they are the same), become by-words of common speech, known to all men, and incorporated into our fluid and elastic language. When an advertiser reaches this point, he has generally attained the highest possible advertising success. In other words, advertising has done for him all it can do, and he has only to keep the stream of advertising going to hold what he has.