Chapter I: A Digest of the Trade-Mark Law

In February, 1905, Congress passed an act entitled "An act to authorize the registration of trade-marks used in commerce with foreign nations or among the several states or with Indian tribes, and to protect the same."

This act went into effect on April 1, 1905. With its amendments it is known as the United States Trade-Mark Law. Its provisions should be known by every manufacturer or advertiser who is using, or who intends to adopt, a trade-mark.

Property in Trade-Marks Does Not Rest upon the Statute, But upon the Common Law.

It should be stated here that ownership in a trade-mark is a property right resting in the common law. This right is, therefore, not a creation of the statute. The purpose of the statute (or Act of 1905) is to systematize the registration of trade-marks, and to provide a definite procedure both for recording and protecting them. A trade-mark may be legally valid without having been registered, and on the other hand, a registered mark may be proved legally invalid. Registration is prima facie evidence of validity, but it is not conclusive evidence.

Upon this subject the Supreme Court of the United States has said, "The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity with compensation for past infringements. This exclusive right was not created by the act of Congress and does not now depend upon it for its enforcement."

The common law rights of the owner of a trade-mark are the same now as they were before the passage of the act. In fact, the statute itself contains this provision: "Nothing in this act shall prevent, lessen, impeach or avoid any remedy at law, or in equity, which any party aggrieved by any wrongful use of any trade-mark might have had if the provisions of this act had not been passed". (Section 23 of Act of 1905.)

The advantages of registration are readily apparent, however. In an action at law against infringement, the owner of a registered trade-mark can produce at once the record of its _adoption and legal registration_. Without registration, it would be necessary for him to go through an involved legal process to prove his rights in the matter.

Registration in the United States Patent Office brings any litigation involving the right to use the trade-mark within the scope of the Federal court, with a judiciary trained in such cases. When a trade-mark is not registered under the Federal law a suit pertaining to it cannot be heard in the United States courts, unless the amount in dispute exceeds two thousand dollars, and the parties on the opposing sides are not citizens of the same state.

Under the Act of 1905 about 39,000 trade-marks had been registered, up to September 1, 1911.

Conditions of Registration

An individual or a corporation has a right to register a trade-mark under the United States law if the trade-mark for which registration is sought belongs to the applicant and is used by him:--

1st. In commerce among the several states;

2nd. Or, in commerce with foreign nations;

3rd. Or, in commerce with the Indian tribes;

Provided the owner of the trade-mark resides within the territory of
the United States (which includes all territory under United States
control), or has a manufacturing establishment situated in United
States territory, or resides in any foreign country which affords, by
treaty, similar privileges to citizens of the United States.

The law states, as a condition of validity, in explicit terms that the trade-mark must not only belong to the applicant, but must be "_used by him_." A trade-mark cannot be registered until it has actually been used on goods, and the use must be continued long enough, and must be of such a nature as to indicate a genuine intention on the part of the owner to adopt the trade-mark as a permanent accessory of his business.

The reason for this is evident. If any citizen could appropriate and sequester a trade-mark by paying the registration fee of ten dollars, without an intention of using it for its legitimate purpose, it does not take much imagination to foresee a Trade-Mark Trust, with most of the desirable trade-marks in the hands of a monopoly, to be farmed out at a profit.

=To be Registrable A Trade-Mark Must Be:=

1st. An arbitrary symbol, or word, or words, or a combination of a
device and wording, not obviously descriptive of the commodity to
which it is to be applied.

2nd. Unlike any other trade-mark, already in use, and applied to
the same class of goods. It must not resemble the trade-mark of a
competitor, or of a potential competitor, to such an extent that the
buying public is likely to be deceived or confused by the resemblance.

3rd. Used in lawful trade.

4th. Of such a character that it may be affixed, printed upon, woven,
sewed, branded or otherwise impressed upon the product with which it
is used, or upon the package or container of the product.

=A Trade-Mark Must Not Be:=

1st. A portrait of a living individual unless the application for
registration is accompanied by the written consent of the individual
whose portrait is used.

2nd. Scandalous or immoral matter of any description.

3rd. The flag or coat of arms of the United States, or of any state,
or of any municipality, or any of the insignia thereof.

4th. The insignia of the American National Red Cross Society.

5th. The flag or coat of arms of any foreign nation.

6th. Any design or picture which has been adopted by a fraternal
society as its emblem.

7th. A design or wording identical with a registered or known
trade-mark owned and in use by another, and appropriated to
merchandise of the same descriptive qualities, or which so nearly
resembles a registered or known trade-mark owned and used by another,
and appropriated to merchandise of the same descriptive qualities, as
to be likely to cause confusion or mistake in the mind of the public,
or to deceive purchasers.

8th. Any mark which consists merely in the name of an individual,
firm, corporation, or association, unless said name is written,
printed, impressed or woven in some particular or distinctive manner,
or is used in connection with a portrait of the individual.

9th. Any arrangement of words or devices descriptive of the goods
with which they are used, or of the character or quality of such
goods. In other words, a trade-mark must not be an advertisement in
the ordinary sense of the word.

10th. Any geographical name or term.

11th. A misrepresentation of the quality, composition, character,
origin, or nature of the commodity with which it is used.

+------------------------------------------------------------+
| |
| Jobber Retailer |
| Manufacturer Trade-Mark Consumer |
| Advertising |
| |
| This looks like a problem in geometry, but it isn't. |
| |
| This diagram shows at a glance how Trade-Mark |
| Advertising draws a straight line between the manufacturer |
| and the consumer. |
| |
| The manufacturer who doesn't advertise has to |
| depend on the jobber and the retailer. In the majority |
| of cases his name never reaches the consumer. His |
| trade is necessarily precarious, and he is constantly |
| in danger of the kind of cut-throat competition that |
| shaves the lowest margin of profit to nothing. |
| |
| But the manufacturer who advertises has his name |
| and the name of his goods on the lips of millions of |
| people. The retailer who attempts to keep advertised |
| goods from selling is like the man who cuts off his |
| nose to spite his face. People will go elsewhere and |
| get what they want. |
| |
| We would like to talk with you about advertising. |
| Among our clients are some of the largest and most |
| successful advertisers in the United States. It will |
| cost nothing to have a talk with us--and we may be |
| able to suggest an idea or plan that will simplify |
| your sales problem. |
| |
| =J. WALTER THOMPSON COMPANY= |
| |
| =New York: 44 East 23rd Street= |
| =Boston: 201 Devonshire Street= |
| =Cincinnati: First National Bank Bldg.= |
| =St. Louis: Odd Fellows Bldg.= |
| =Chicago: The Rookery= |
| =Cleveland: Swetland Bldg.= |
| =Detroit: Trussed Concrete Bldg.= |
| =Toronto: Lumsden Bldg.= |
| =London: 33 Bedford St., Strand= |
+------------------------------------------------------------+

A special provision of the Act of 1905 legalized all trade-marks that had been in _exclusive use_ by the applicant for ten years prior to the passage of the act, and this provision applies even to trade-marks of ten years' standing that, because of their character, could not be registered under the act. The language of the act dealing with this subject is as follows:

"Nothing herein (in the Act of 1905) shall prevent the registration
of any mark used by the applicant or his predecessors, or by those
from whom title to the trade-mark is derived, in commerce with
foreign nations or among the several states, or with Indian tribes,
which was in actual and exclusive use as a trade-mark of the
applicant or his predecessors from whom he derived title for ten
years next preceding the passage of this act." (Section 5, Act of
1905.)

Red Cross Shoe

"It Bends with your Foot."

_The trade-marks of the Red Cross Shoe are the Red Cross shown below
and the design shown above._

KROHN FECHHEIMER & CO.

CINTI. U. S. A.

]

There are many trade-marks registered under this ten years' clause.

Manufacturers are prohibited from using the insignia of the Red Cross Society as a trade-mark, but there is a Red Cross Shoe, and the products of the well-known druggists' specialty house of Johnson & Johnson bear a Red Cross symbol. In both cases, their right is based on long and continuous use antedating the act of 1905, which especially exempts such cases.

How to Apply for Registration

The registration of trade-marks is under the supervision of the Commissioner of Patents, and regular forms for registration are prescribed. Copies of these forms may be obtained by applying to the Patent Office.

In applying for trade-mark registration, the following provisions of the law must be observed:

1st. The applicant must file a _Petition_ in the Patent Office, addressed to the Commissioner of Patents. This petition must be in regular form, and should be signed and dated.

B.V.D.

_A valuable and widely advertised trade-mark. Can you guess what the
three letters mean?_

]

TRADE MARK.

=CRESCENT
GOLD FILLED.=

_A trade-mark of the Keystone Watch Case Co._

]

2nd. With the petition a _Statement_ must be forwarded. This document must give the name, domicile, location and citizenship of the applicant; the class of merchandise and the particular description of goods comprised in such class to which the trade-mark is appropriated; a statement of the mode in which the trade-mark is to be affixed to the goods; and the length of time during which the trade-mark has been used. It is not necessary to give a written description of the trade-mark itself except when it contains colors not shown in the drawing. This statement must be signed by the applicant. Where a corporation is the applicant, the secretary should sign the statement. When a partnership is the applicant, any partner can sign, but the names of all the members of the firm must be given.

CHIFFONETTE

VEILINETTE

MALINETTE

_Trade-marks applied to fabrics and registered by Theo. Tiedemann &
Co._

]

3rd. There should also be forwarded to the Patent Office, at the same time, a _Declaration_ of the applicant, sworn to before a notary public, to the effect that he believes the statements made in his application are true; that he believes himself to be the owner of the trade-mark sought to be registered; and that said trade-mark is used by him in commerce among the several states of the United States, with the Indian tribes, or with foreign nations; and that the drawing sent with the application truly represents the trade-mark sought to be registered.

4. With this application there must be filed a _Drawing_ of the trade-mark, made according to the following specifications: The size of the sheet on which the drawing is made must be exactly 10 x 15 inches, and the sheet must be of pure white paper, corresponding in thickness to two-sheet Bristol board. The surface of the paper must be calendered and smooth. India ink must be used. One inch from its edges a single marginal line must be drawn, as shown in the accompanying cut, leaving the dimensions inside the border exactly 8 x 13 inches.

Within this border, the drawing and signatures must be included. One of the shorter sides of the sheet is regarded as its top, and measuring downwardly from the marginal line, a space of not less than 1-1/4 inches is to be left blank for the heading of title, name, number and date. All drawing must be made with the pen only. Every line and letter, including signatures, must be absolutely black. The name of the proprietor of the trade-mark, signed by himself, or his attorney of record, must be placed at the lower right-hand corner of the sheet within the marginal lines.

The size of the sheet must be exactly
10 x 15 inches.

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c| Proprietor. |
h| |
e| By. |
s| |
.| Attorney. |
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+--------------------------------------+
<--This space must be eight inches.-->

=A Diagram Showing Method of Making Drawing=

_The drawing that accompanies an application for registration of a
trade-mark must be made exactly on this pattern. It is essential that
these directions be followed._

]

Onoto

_Coined word used as the name of a fountain pen._

]

Stork Baby

TRADE SHOES MARK

_The stork is the appropriate and suggestive trade-mark of the Stork
Co. manufacturers of baby things._

]

5th. With the application five _Specimens_, or facsimiles, of the trade-mark as actually used upon the goods, must be sent to the Commissioner of Patents.

6th. The _Fee_ for registering a trade-mark is ten dollars, and this amount should be sent with the application.

TRADE MARK

_Tapestry Brick_
REGISTERED IN U. S. PATENT OFFICE

_Trade-mark moulded into the reverse side of every Tapestry Brick._

]

The foregoing is a brief resumé of the rules for registration. Those intending to register trade-marks should obtain exact forms from the Commissioner of Patents.

A certificate of registration remains in force for twenty years, and it may be renewed from time to time, upon expiration, for like periods of twenty years, upon payment of a renewal fee of ten dollars.

The owner of a trade-mark may prosecute his own application for registration, but he is advised, unless familiar with such matters, to employ a competent attorney. A register of attorneys is kept in the Patent Office, on which is entered the names of all persons entitled to represent applicants before the Patent Office in the prosecution of applications for patents, and any registered attorney will be recognized in the prosecution of applications for registration of trade-marks.

Procedure of the Patent Office

The examiner in charge of trade-marks examines all applications for registration. If, after examination, registration is refused, the applicant will be notified, and the reasons for refusal stated, in order that the applicant may judge of the propriety of prosecuting his application further.

If, on examination of an application, it appears that a trade-mark is entitled to registration, the mark will be published at least once in the Official Gazette of the Patent Office. Such publication shall be at least thirty days prior to the date of registration.

SW
COVER THE EARTH

_A Sherwin-Williams advertising symbol._

]

If no notice of opposition be filed within thirty days after such publication, the applicant or his attorney will be notified of the allowance of his application, and a certificate of registration will be granted.

Under certain conditions amendments may be made in an application.

Every applicant whose mark has been twice refused registration by the Examiner of Trade-marks for the same reasons upon grounds involving the merits of the application, may appeal to the Commissioner, in person, upon a payment of a fee of fifteen dollars.

From an adverse decision by the Commissioner of Patents an appeal may be taken to the Court of Appeals of the District of Columbia.

TRADE MARK
REG.
U. S. PAT. OFF.

_The well-known trade-mark of the National Lead Company._

]

If, upon examination of an application to register a trade-mark, the examiner in charge finds that the mark for which registration is sought is identical with, or essentially similar to, a trade-mark appropriated to goods of the same descriptive qualities, for which a certificate of registration has been already issued, an interference will be declared.

When an interference is declared, the matter in dispute is referred to the Commissioner of Patents, who, under the rules of the Patent Office, passes judgment upon the points at issue.

Any person who believes he would be damaged by the registration of a mark may oppose the same by filing a written notice of opposition, stating the grounds therefor, within thirty days after the publication of the mark sought to be registered, which notice of opposition shall be accompanied by the fee required by law ($10.00) and shall be verified by the person filing the same before one of the officers mentioned in Section 2 of the Act of February 20, 1905.[1] An opposition may be filed by a duly authorized attorney, but such opposition shall be null and void unless duly verified by the opposer, within a reasonable time after such filing. A duplicate copy of the notice of opposition must be filed, either with the notice of opposition or within a reasonable time after the filing of the same.

TRADE E.&W. MARK

_All men, and some women, know what this stands for._

]

Any person, deeming himself to be injured by the registration of a trade-mark in the Patent Office, may, at any time, make application to the Commissioner to cancel the registration thereof. Such application shall be filed in duplicate, shall state the grounds for cancelation, and shall be verified by the person filing the same, before one of the officers mentioned in Section 2 of the Act of February 20, 1905.

If it shall appear, after a hearing before the examiner of interferences, that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the examiner in charge of interferences shall so decide, the Commissioner shall cancel the registration of the mark, unless appeal be taken within the limit fixed.

F A
TRADE MARK

_A weak and unimpressive trade-mark._

]

In cases of opposition, and of applications for cancelation, the examiner in charge of trade-marks shall forward the files and papers to the examiner in charge of interferences, who shall give notice thereof to the applicant or registrant. The applicant or registrant must make answer at such time, not less than thirty days from the day of the notice, as shall be fixed by the examiner in charge of interferences.

The law directs that the owner of a registered trade-mark print, or impress, or affix, in legible letters, the words:

=Registered in U. S. Patent Office
or
Reg. U. S. Pat. Off.=

upon such trade-mark wherever it is used, or sufficiently near it to be discerned whenever the trade-mark is seen. The manner in which this should be done is shown in connection with the "Fine-Form" Maternity Skirt trade-mark on this page. When, from the character or size of the trade-mark, or from its manner of attachment to the article, this cannot be done, a label containing a like notice should be affixed to the package or receptacle wherein the article is enclosed.

_Fine-Form
TRADE MARK
MATERNITY SKIRT
Registered in US Pat Office_

_Shows method of exhibiting registry notice in connection with a
trade-mark._

]

It is important that this be done, otherwise, in a suit for infringement by a party who has failed to give such notice of registration no damages shall be recovered, except on proof that the defendant was duly notified of infringement, and continued the same after such notice.

Registration in Foreign Countries

American owners of trade-marks who expect to do business in foreign countries should not neglect the registration of their trade-marks abroad. A failure to observe this precaution has led, in some cases, to a situation where the American owner, entering the foreign field, found his trade-mark already appropriated. The trade-mark laws of various foreign countries differ greatly, in some instances, from the United States law. A manufacturer who desires to do business in a foreign country should consult a trade-mark attorney who specializes in foreign trade-mark registration and protection, and be guided by his advice.

Classification of Merchandise

The right to use a trade-mark is limited to the class of merchandise for which it is registered, and to the goods, falling within that class, on which it has been actually used.

For the purpose of classification the Patent Office has issued a list of forty-nine general classes of merchandise. An applicant for the registration of a trade-mark must specify the class of merchandise with which his mark has been used, and must describe the particular goods in that class on which it has been used. In case his application is granted, his right to use the trade-mark is confined to the line of products named in his application.

The list follows:

1. Raw or partly prepared materials.

2. Receptacles.

3. Baggage, horse equipments, portfolios, and pocket-books.

4. Abrasive, detergent, and polishing materials.

5. Adhesives.

6. Chemicals, medicines, and pharmaceutical preparations.

7. Cordage.

8. Smokers' articles, not including tobacco products.

9. Explosives, firearms, equipments, and projectiles.

10. Fertilizers.

11. Inks and inking materials.

12. Construction materials.

13. Hardware and plumbing and steam-fitting supplies.

14. Metals and metal castings and forgings.

15. Oils and greases.

16. Paints and painters' materials.

17. Tobacco products.

19. Vehicles, not including engines.

20. Linoleum and oiled cloth.

21. Electrical apparatus, machines, and supplies.

22. Games, toys, and sporting goods.

23. Cutlery, machinery, and tools, and parts thereof.

24. Laundry appliances and machines.

25. Locks and safes.

26. Measuring and scientific appliances.

27. Horological instruments.

28. Jewelry and precious-metal ware.

29. Brooms, brushes, and dusters.

30. Crockery, earthenware, and porcelain.

31. Filters and refrigerators.

32. Furniture and upholstery.

33. Glassware.

34. Heating, lighting, and ventilating apparatus, not including
electrical apparatus.

35. Belting, hose, machinery packing, and non-metallic tires.

36. Musical instruments and supplies.

37. Paper and stationery.

38. Prints and publications.

39. Clothing.

40. Fancy goods, furnishings, and notions.

41. Canes, parasols, and umbrellas.

42. Knitted, netted, and textile fabrics.

43. Thread and yarn.

44. Dental, medical, and surgical appliances.

45. Beverages, non-alcoholic.

46. Foods and ingredients of foods.

47. Wines.

48. Malt extracts and liquors.

49. Distilled alcoholic liquors.

50. Merchandise not otherwise classified.

(Note: Class 18 was abolished Feb. 24, 1909.)

As a result of this feature of the law products in various non-competitive lines sometimes bear the same names. There is, for example, a Yale[2] lock and a Yale motorcycle, an Ideal hairbrush and an Ideal fountain pen, a Packard piano and a Packard automobile, a Skidoo soap and a Skidoo Marine engine.

State Trade-Mark Laws

Most states have some kind of a trade-mark law, many of them good ones, and about a dozen have strong penal codes covering the subject, under the term of counterfeiting, while others are able to do what the United States courts cannot do--actually mete out imprisonment to those who infringe. Pennsylvania's law in this respect is particularly thorough.

The Federal statutes concerning trade-marks apply to the entire country. Few large concerns doing a national business register in the states. Most of them go to the Patent Office and secure national registration.

There is nothing in any of the state laws which make it safer to register by states, since California's obnoxious law has been repealed, but in some cases, where persistent infringers are at work, owners of trade-marks secure state registration as an extra precaution.

FOOTNOTES:

[1] "The verification required by this section may be made before any person within the United States authorized by law to administer oaths, or when the applicant resides in a foreign country, before any minister, chargé d'affaires, consul, or commercial agent holding commission under the government of the United States, or before any notary public, judge, or magistrate having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States."--(_Extract from