Things to Know About Trade-Marks: A Manual of Trade-Mark Information

Chapter II: Essentials of a Valid Trade-Mark

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To a layman the trade-mark law seems, at first consideration, to be a crystallized system of arbitrary rules without a fundamental underlying principle.

A study of its application will show that this is a mistaken view of the case. As a matter of fact, the law is excellently framed, and is based on a broad principle which draws a just line of cleavage between the rights of an individual and his encroachment upon the rights of others.

TRADE MARK
Thomas A Edison

_An illustrious and valuable trade-mark._

]

In the practical workings of a law which deals with commercial activities in their most highly developed phase, in a sphere where the ingenuity of men is on fertile ground, in cases where the weight of a hair would make the difference between yea and nay, it is inevitable that many fine distinctions must be drawn.

The courts, by contradictory decisions, have here and there brought confusion into the practice of the Patent Office, as applied to trade-mark procedure, but, on the whole, the judicial interpretation of the law has been fairly uniform and consistent.

It should be mentioned here, for the reader's information, that the attitude of the Patent Office toward applications for the registration of trade-marks has been criticized, on various occasions, by some of those who have had dealings with it. Its rulings have been characterized as narrow and illiberal, especially in the matter of trade-marks alleged to be descriptive in their nature.

In the preceding chapter we laid down briefly the requisites of a valid trade-mark. We shall now discuss these requirements more fully, using specific and generally well-known examples of trade-marks to illustrate our meaning.

A Portrait of a Living Individual Cannot be Registered as a Trade-Mark Unless by Consent of the Individual Whose Portrait is Used, or, if a Minor, by Consent of his Legal Guardian

This section of the law is based on the recognized right of any person to prohibit the unauthorized reproduction of his portrait for any advertising purpose. In some of the states--New York, for example--there are state laws specifically forbidding such unauthorized reproduction.

While the law prohibits the registration of a living individual's portrait as a trade-mark, without that person's consent, it is allowable to use the portrait of a historical character.

The trade-mark of the Robert Burns Cigar is a picture of the poet Burns, with his facsimile signature.

Pictures of Franklin, Napoleon, Henry Clay, Bismarck, and many other famous men are used as trade-marks. A cereal recently placed on the market under the name of "Washington Crisps" carries George Washington's portrait on the package.

Benjamin Franklin's face is registered as a trade-mark by the Curtis Publishing Company, and is printed in this connection on the editorial page of the Saturday Evening Post.

MENNEN'S BORATED TALCUM
TRADE MARK

_This face has been printed more times than any other portrait ever
used in advertising._

]

A celebrated instance of a face used as a trade-mark is shown in the picture of Gerhard Mennen on this page. Mennen's Talcum Powder was produced by Gerhard Mennen, who had his own picture put on each package as an identification to the purchaser. After years of use, his portrait was formally registered in the Patent Office.

Another famous face is that of W. L. Douglas, shoe manufacturer and Ex-Governor of Massachusetts.

A very effective trade-mark is a combination of Thomas A. Edison's portrait and signature, used with the Edison Phonograph. Edison is known by reputation to every American, and his picture and signature used in connection with a mechanical device, give it the stamp of high excellence. Imagine how much more difficult the selling effort of the Edison Phonograph Company would have been if they had called their instrument The Voltex Phonograph, for example, or some similar name.

Everybody has seen the Woodbury face, which is identified with Woodbury's Facial Soap, and other preparations of the Andrew Jergens Company of Cincinnati. This is a very valuable trade-mark, on account of the extensive advertising, running through many years, that has been given it. One of the striking features of this trade-mark is that the head seems to be neatly decapitated just under the chin. This odd appearance makes the memory of this picture stick in the reader's mind longer than any ordinary portrayal of a human face.

A Valid Trade-Mark Cannot Be any Arrangement of Words or Devices Descriptive of the Goods with which They are Used, or of the Character or Quality of the Goods

The intent of the law here is to prevent the individual appropriation of general terms descriptive of a class of goods. If it were allowable to register and protect such phrases as "The Best Soap in the World", applied to a certain brand of soap, for instance, it is easy to see that all desirable superlatives and descriptive words would soon be appropriated, to the detriment of other concerns in the same line of trade. Therefore, the law makes strict provision that a trade-mark shall not be descriptive in any sense.

Though this is the intent of the law, in its working out the line seems to be finely drawn in some cases.

"Royal" has been held to be a valid trade-mark for a baking powder on the ground that it has been long used as the name of the total output of a factory, and that it has become to the public mind a designation of origin. It seems difficult for a layman to reconcile this decision with that of another court, which held that "Royal" is not a valid trade-mark for flour, as it indicates "quality and is incapable of exclusive appropriation."

The word "Ideal" is held to be a valid trade-mark for a fountain pen, its use in this connection being fanciful and not descriptive.

The word "Naphtha", used as a name for a soap with naphtha as an ingredient, was held to be descriptive, and therefore not registrable as a trade-mark, to the exclusion of the goods of other manufacturers, although the owners, Fels & Company, of Philadelphia, had advertised it extensively throughout a considerable period of time.

"Fitmeeasy", as applied to corsets, was considered descriptive.

"Maltha" was refused registration for a brand of paving asphalt. It appears that "Maltha" means liquid asphalt and is in general use in the trade with that meaning.

"Elastic Seam", a name used to designate drawers having an elastic seam at the side, is purely descriptive, and was so considered by the court in the case of _Scriven v North_.

On the other hand, the word "Elastic", when applied to bookcases, is held to be a fanciful word, not descriptive, and is a valid trade-mark.

Application was made by a brewer for the registration of the word "Star", accompanied by a picture of a six-pointed star, as a trade-mark for beer. Opposition by another brewer was filed, and it was shown that both the word "Star" and the symbol had been used for ages in Germany, the home of beer, as a general sign of the brewing business, in the same sense that a striped pole denotes a barber. It was claimed, and the claim was judicially sustained, that both the word "Star" and its symbol are indicative of the brewing business in general and, as such, are common to the trade, and cannot therefore be considered valid trade-marks for beer.

THE ATLAS PORTLAND CEMENT CO
PORTLAND
ATLAS
CEMENT
30 BROAD ST. NEW YORK

LEHIGH PORTLAND CEMENT COMPANY
LEHIGH
PORTLAND
-WORKS-
ORMROD LEHIGH CO
PENNA.
CEMENT
ALLENTOWN, PA.

· ALPHA · PORTLAND · CEMENT · COMPANY ·
ALPHA
PORTLAND
GENERAL OFFICE
EASTON.
PENNA
CEMENT
· MANUFACTURERS ·

_Some Portland Cement Trade-Marks._

]

A flour manufacturer conceived the idea of selling his product in barrels made by staves of alternately light and dark wood--striped barrels, in fact. He then desired registration for a trade-mark which consisted of a pictorial representation of this form of barrel. It was held that this mark was not registrable, as it was descriptive of the barrel.

"Better than Mother's" Mince Meat was held to be invalid as a trade-mark, as it is obviously indicative of quality.

"COLUMBUS"
SANDUR
SANITARY--DURABLE
PATENTED

_A complicated and involved trade-mark._

]

A descriptive word in a foreign language cannot be exclusively, appropriated as a trade-mark. The word "Matzoon" in Armenian means "fermented milk". It was held, in the case of _Dadirrian v Yacubian_ that this word, applied to a preparation of fermented milk, was not a valid trade-mark.

Arbitrary symbols, numbers or words in common use in any line of trade to designate grades, or varieties, of products, are held to have become descriptive by usage. "Lake", "Cylinder", and "New York" are trade names used to indicate qualities of glass. They were refused registration on the ground that they were descriptive appellatives. Note that one of the names, "New York", would have been considered invalid on the ground of being a geographical term.

"A No. 1", "A X No. 1" and "No. 1", used by a plow manufacturer to indicate size and shape of plows, were considered descriptive terms, and, therefore, not valid trade-marks.

While descriptive numbers cannot be registered as trade-marks, it is permitted to register numbers that are used as arbitrary symbols. A celebrated instance of a number used as a trade-mark is "4711" used to designate a line of toilet articles. When the manufacture of the famous "4711" Perfume began, the owner's place of business was at 4711 Glockengasse, in Cologne. The street number "4711" was placed on the label, and it is to-day one of the oldest trade-marks in existence, having been used for about one hundred and twenty-five years. The house at 4711 Glockengasse has long since disappeared, and "4711" is now only an arbitrary symbol.

A manufacturer of hooks and eyes applied for registration of the phrase "Rust? Never!" as a trade-mark. Registration was refused, as the mark was held to be descriptive, indicating that the hooks and eyes would never rust.

It should be noted that there are valid trade-marks that seem to be descriptive, and which no doubt convey to the purchaser the suggestion of quality, but which are not really descriptive, but merely suggestive. An example of this is "Hydegrade" as applied to fabrics. This word is a combination of "Hyde" (the name of the proprietor) and "Grade". The word, by virtue of its sound, brings to the mind the idea of "high-grade"--a very fortuitous circumstance, doubtless, in the opinion of the owners.

Brenlin

_Affixed by using perforated letters. Trade-mark appears on every
yard of Brenlin window shades._

]

Names, descriptive in their nature, and therefore not registrable under the Act of 1905, may, nevertheless, be protected by the law of unfair competition, if the circumstances are such as clearly to indicate that a new user of the name has adopted it for the purpose of trading upon the reputation of an older or more widely known concern.

A Trade-Mark Must Not Misrepresent the Quality, Composition, Character, or Origin of the Product

A fraud cannot be legalized, and a misrepresentation of any kind, made by a trade-mark, renders it invalid.

"Syrup of Figs" was held to be invalid as a trade-mark, and not protectable, in a case where the product was shown to have only a trace of fig syrup.

The title "American Sardines", applied to fish which were not sardines, was considered a misrepresentation, and was refused registration.

(Note: Even if not a misrepresentation, it would be considered
invalid, as it is descriptive.)

In the case of _Wrisley v Iowa Soap Company_, it was held that the name "Old Country Soap" used on soap and advertised in such a way as to lead people to believe that it was made in Europe, was deceptive and protection to the name could not be given.

_A trade-mark that may be considered good or bad, depending on the
way you look at it._

]

An interesting case is that of _Memphis Keeley Institute v Leslie E. Keeley Co._ (144 Fed. R. 628; 155 id. 964).

The Memphis Keeley Institute made a contract with the Leslie E. Keeley Company to represent the Keeley Company in Tennessee in treating inebriates. The Keeley Company agreed to sell the Keeley Cure to no one in Tennessee except through the Memphis Institute.

After a while the Keeley Company claimed that the Memphis Institute had violated its contract, and refused to furnish any more of the treatment to the Memphis concern.

The Memphis Institute continued to advertise itself as the representative of the Keeley Company, and to assert that its treatment was that of the Keeley Company.

"STEERO"

_A coined word used as a trade-mark._

]

Suit being brought, the Memphis Institute alleged that the complainant's representations of the ingredients of its remedies were untrue and misleading. The Keeley Company had extensively advertised its treatment as the "Gold Cure". It was shown in court that it contained no gold in any form; that in the beginning chloride of gold had been used in one instance, and that it had almost killed the patient; and that special bottles of the cure had been prepared with gold in them in order that a chemist might be deceived; and that this chemist's analysis of the spurious bottles had been extensively advertised as showing that gold was in the remedy.

ARLINGTON MILLS
SKILL WINS FAVOR

_A simple and effective trade-mark._

]

On the evidence of these misrepresentations, the Court of Appeals reversed the decision of the lower court, and dismissed the complaint.

The doctrine of law that misrepresentation is a bar to protection of a trade-mark or a trade-name has been clearly established by many decisions similar to the above.

A Trade-Mark Must Not Be Similar to a Trade-Mark previously Registered for the same Class of Merchandise

When a pictorial or symbolic device has been registered, registration is refused to any other mark, for the same class of merchandise, composed of words describing the pictorial or symbolic device already registered. Or, _vice versa_, if the wording has been registered first, a symbol with the same meaning will be denied registration. For example:--

A trade-mark consisting of the conventional representation of a fox, unaccompanied by lettering, would not be a valid trade-mark if the word "Fox" had already been registered for the same class of merchandise. In either case the goods would be called the "Fox" brand.

The practice is to refuse registration of a mark in cases where, although there may be no literal similarity, there is a similarity in ideas.

"Edelweiss-Maltine" was refused registration on the ground that it conflicted with "Maltine", a trade-mark already registered for goods of the same description.

"Certosa" was refused registration as a trade-mark for flour on account of its similarity to the word "Ceresota" already registered.

The Patent Office has held that in an interference between two trade-marks, one consisting of the pictorial representation of a bouquet of flowers, and the other consisting of the word "Bouquet", applied to the same class of goods, that the marks were identical in meaning.

"Nassac" having been registered as a trade-mark, the word "Nayassett" was refused registration on the ground of similarity. Thereupon, the owner of the "Nayassett" mark obtained the consent of the owners of "Nassac" to the registration of "Nayassett". This did not alter the case, in the opinion of the Commissioner of Patents, who held that the law was mandatory, and was not affected by agreement among the owners of conflicting marks.

In the case of _McLean Co. v Adams Co._ (136 Official Gazette, 440) it was held that there was no conflict between "Victoria" and "Victor", a mark already registered for the same class of merchandise. A picture of Queen Victoria's head was shown on a medallion, associated with the word "Victoria". The "Victor" trade-mark consisted of the words "The Victor" with a device showing a knight on horseback. As the similarity between the marks was obviously slight and superficial, and was outweighed by the dissimilar features, it was held that the "Victoria" trade-mark was entitled to registration.

It was held that there was no conflict between two trade-marks for stove polish, one consisting of the word "Raven" with the representation of a raven sitting on a limb of a tree, and the other consisting of the word "Crow" associated with a picture of a crow, also perched on a limb, but in a different position.

In case of conflicting marks the test of similarity is whether the marks are sufficiently alike in sound or in appearance, or in intention, to mislead the purchaser.

A Trade-Mark May Not Be a Geographical Name or Term

The object of this provision of the law is to prohibit the appropriation of the name of a place by an individual to the detriment of other manufacturers in the same locality, as well as to prevent a misrepresentation of the place of origin of a trade-marked article.

This restriction does not apply to geographical names used in an arbitrary or fanciful sense.

NAME
DUPONT
ON EVERY BRUSH

_This shows how the reader's attention is called to the Dupont brush
trade-mark in advertisements._

]

The Fleischman Company, well-known bakers of New York, bake and sell a Vienna Bread. The term "Vienna" used in this connection was held, in a test case, to be a valid trade-mark, although it is a geographical name.

In the decision bearing on the Vienna trade-mark for bread, the Court said: "As a mark for bread it is purely arbitrary, and is in no manner descriptive of the ingredients or the quality of the article. No deception is practised, because the place of its manufacture is given, and it is known that bread cannot be imported from abroad for use here."

"Durham", a name applied to tobacco, has been judicially held not to be a valid trade-mark against another manufacturer located in the town of Durham. While any tobacco manufacturer in Durham has a right to call his tobacco "Durham Tobacco", he cannot imitate the label of the original Durham tobacco, or use the advertising symbol of a bull, without being liable to injunction and a suit under the law of unfair competition.

"French", applied to paints, was considered a geographical name, and not valid as a trade-mark. "French Tissue"--the name of a court-plaster--was considered invalid, the first word being a geographical term and the second a descriptive word.

The word "Celtic", however, has been considered valid as a trade-mark for tea. The Commissioner of Patents, before whom the case went on an appeal, decided that while "Grecian", "Roman" and "Oriental" had been held to be geographical, as each of these terms refers to a certain section of the globe, the word "Celtic" is not. There seems to be no authority to sustain the popular opinion that "Celtic" refers only to Ireland. The dictionary defines "Celtic" as "pertaining to the Celts", of whom the Irish are only a branch. It has never been applied to any specific locality.

"Yucatan" applied to leather; "Manhattan" as the name of sewing-machines; and "Pittsburgh" as a trade-mark on pumps, have all been held to be geographical, and therefore invalid.

In a recent decision of the Supreme Court, the exclusive right of the Carthusian monks to use their well-known trade-mark for their Liqueur Chartreuse, was upheld. This right was attacked on the ground that Chartreuse is a geographical name, the liqueur having been made at a monastery called for many centuries "La Grande Chartreuse".

In his opinion Mr. Justice Hughes said:

"If it be assumed that the monks took their name from the region
in France in which they settled in the eleventh century, it still
remains true that it became peculiarly their designation. And the
word 'Chartreuse', as applied to the liqueur, which for generations
they made and sold, cannot be regarded in a proper sense as a
geographical name. It had exclusive reference to the fact that it
was the liqueur made by the Carthusian monks at their monastery.
So far as it embraced the notion of place, the description was not
of district, but of the monastery of the order--the abode of the
monks--and the term, in its entirety, pointed to production by the
monks."

While a geographical name may be upheld as a valid trade-mark, under exceptional conditions--as shown in the Fleischman case--the safe plan to follow is to avoid names of this character when selecting a trade-mark.

Under the collection of legal precedents constituting the law of unfair trade, the owner of a geographical trade-mark may successfully defend his right to its exclusive use if he has acquired such a reputation under it that it has grown to be, in the public mind, an arbitrary designation of his goods.

The American Waltham Watch Company, manufacturing watches at Waltham, Massachusetts, has legally prevented other manufacturers in Waltham from calling their product "Waltham" watches unless the name is used with some accompanying statement which clearly distinguishes these watches from the original Waltham watch.

There is an Elgin Watch, a Kalamazoo Stove and a Bristol Fishing-Rod, to single out a few examples of geographical terms used as trade-marks. The exclusive use of these trade-marks by the makers of the well-known articles which they represent can no doubt be legally sustained on the ground that these names have become arbitrarily identified, through years of use and extensive distribution, with the articles to which they are applied, and that their indiscriminate use would cause confusion in the public mind and loss to the original owners.

Their security as trade-marks rests, not upon the letter of the trade-mark act, but upon the law of unfair trade.

A Trade-Mark Must Not Consist of the Insignia of the American National Red Cross

The Act of 1905 (the trade-mark statute) is silent on the subject of the Red Cross as a trade-mark. Its use as a trade-mark, or as an advertisement, or in trade in any form, is prohibited by the act incorporating the American National Red Cross, approved January 5, 1905. An extract from this act, bearing on this subject, is quoted here:

"Nor shall it be lawful for any person or corporation, other than the
Red Cross of America, not now lawfully entitled to use the sign of
the Red Cross, hereafter to use such sign or any insignia colored in
imitation thereof for the purposes of trade, or as an advertisement
to induce the sale of any article whatsoever. If any person violates
the provisions of this section, he shall be guilty of a misdemeanor
and shall be liable to a fine of not less than one nor more than five
hundred dollars, or imprisonment for a term not exceeding one year,
or both, for each and every offense. The fine so collected shall be
paid to the American National Red Cross."

In the Official Gazette there is reported the case of an applicant who applied for registration of a label for cough syrup, containing the emblem of the Red Cross and the words "Red Cross". This label having been refused registration, the applicant submitted it in an amended form with the Red Cross emblem left out, but with the wording left intact. It was contended by him that the Act of January 5, 1905, prohibited only the use of the "sign of the Red Cross", and that by implication the words "Red Cross" should be considered registrable. This contention of the applicant was held by the Commissioner to be an attempt to evade the spirit of the law, and registration was refused.

A trade-mark containing the Red Cross emblem does not fall within the prohibition expressed in the statute if it has been in exclusive use by the applicant for ten years prior to 1905.

A Trade-Mark Must Not Be Merely 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 the Portrait of the Individual

A surname cannot be the exclusive property of an individual, because there may be other persons who have an equal right to use the same name. A man by the name of Jones may go into the business of manufacturing cigars, for example, and he may call his product "Jones Cigars" and, by his industry and ability, create a valuable business.

But any other Jones has a right to manufacture and sell cigars, if he feels so inclined, and the first Jones cannot prevent it. It is true that, under the law of unfair trade, he may compel all other Joneses to mark their cigars in _some distinctive manner_, in order that purchasers may not be misled into the belief that they are buying the product of the original Jones, when such is not the case.

This principle is specifically illustrated in the famous Walter Baker cases, of which a brief resumé is given in another chapter.

An obvious intent of the framers of the Act of 1905 was to discourage the use of the names of "individuals, firms, corporations and associations" as trade-marks.

Consequently, it was provided in the act that names of this character should not be registered unless they were "written, printed, impressed or woven in some particular or distinctive manner, or used in connection with the portrait of the individual."

The ruling of the Patent Office, which has been sustained by the courts, is that the particular or distinctive manner of presenting the name must exhibit a peculiarity so pronounced that it dominates the name, and throws it into relatively secondary importance. In other words, a trade-mark of this character, to be registrable, must possess more of the quality of a device than of a name.

It is conceded that an autograph signature, like "Wilcox's", shown on this page, is entitled to registration.

Soon after the law went into effect a curious tangle developed in the application of this feature of the act.

It was found that the Patent Office--and its stand was upheld by the Court of Appeals of the District of Columbia--would not sanction the registration of a name possessing all the technical requisites of a valid trade-mark if it happened to be the name of the applicant, unless it was written or printed in some particular and distinctive form.

Wilcox's
TRADE MARK REGISTERED

_Written in a "particular and distinctive manner" within the meaning
of the law._

]

To a legal mind there may have been some good reason for this attitude of the court, but a layman of ordinary common sense can find nothing in the statute that would justify a refusal to register a trade-mark, valid in other respects, merely because it happened to be the name of the person, corporation, or firm making the application.

The name "Success", a valid mark in every essential respect, was refused registration as a trade-mark for Success Magazine, because it formed part of the name of the applicant, The Success Magazine Company.

The ruling of the court left the implication that if Success Magazine had been published by John Brown & Co., or by any other concern other than the Success Magazine Company, registration would have been granted. It was held that a registration of the name "Success" would be a violation of that provision of the law providing that a mark consisting merely of the name of the applicant could not be registered.

The word "Champion", as a trade-mark for locks, was rejected by the Patent Office on the ground that it formed part of the name of the Champion Safety Lock Company. The word "Champion" is arbitrary and fanciful, and could no doubt have been registered by any other firm than the Champion Safety Lock Company.

Many other similar cases developed during the first six years of the law's application. This situation led to the passage on February 8, 1911, of the following amendment of this section of the Act of 1905:

"_Provided_, further that nothing herein shall prevent the
registration of a trade-mark otherwise registrable because of its
being the name of the applicant or a portion thereof."

It is now practicable to register the name of any individual, firm, corporation or association--even if it is the name of the applicant--provided it is "written, printed, impressed or woven, in some particular or distinctive manner."

Stewart Hartshorn

_This name turns up when the time comes to hang the window shades._

]

A familiar example of the name of an individual used as a trade-mark is to be found on every Hartshorn shade roller, where the name "Stewart Hartshorn", written as an autograph signature, has been used for many years. The name "Huyler's", applied to confectionery, is another case of the same kind.

The name "John Wanamaker" has, by long usage in connection with a highly successful mercantile business, become the most valuable trade-mark in the department store world.

"Stewart Hartshorn", "Huyler's", and "John Wanamaker" are all common law marks, fully protected by the law of unfair trade.

A Trade-Mark Must Not Be any Design or Picture Adopted by a Fraternal Society as its Emblem

The intent of the law is to prohibit any individual from trading on the reputation of a fraternal order.

Registration was refused for the phrase "Knights of Labor" as a trade-mark on whiskey.

A Trade-Mark Must Not Consist of, or Comprise, the Flag or Coat of Arms or other Insignia of the United States, or any Simulation thereof, or of any State, or Municipality, or of any Foreign Nation

It has been decided in one case where an application was made to register the coat of arms of Maryland, that it could not be registered even under the ten years' clause.

Simulations of the coat of arms of the United States, or of the United States flag, have been denied registration.

The U. S. Sanitary Manufacturing Co. was refused registration for a trade-mark consisting of the letters "U. S." with a background of a shield similar to that of the conventional United States shield.

In the case of Popoff Frères, importers, registration of a mark including the Russian coat of arms was refused, although proof was shown that the Russian government had authorized the applicants to use this coat of arms as their trade-mark. The Commissioner held that the law could not be set aside by agreement.

The reader is doubtless familiar with the trade-mark of the United Cigar Stores--a shield consisting of a background at the top with the word "Cigars" on it, with the word "United" forming the lower part of the design. The vertical lines form seven heavy strokes, corresponding to the seven red stripes in the American flag. This design is suggestive of the United States coat of arms, but it is so cleverly worked out that it does not come within the prohibition expressed in the law. Suggestive as this design is of the American shield, this feature is secondary, after all, for the design is dominated by the lettering "United" and "Cigars."

A Trade-Mark Must Not Be a Form, a Color, a Shape, or a Material

It is clear that a trade-mark must be a "mark"--not a box, or an envelope, or container of any kind. In a case where it was sought to register a drum-shaped box used to contain "Drum Collars", it was held that, "if such claims were allowed, the forms and materials of packages to contain articles and merchandise would be rapidly taken up, and appropriated by dealers, until some one bolder than the others, might go to the very root of things, and claim the primitive brown paper and tow strings."

A product itself cannot be registered as a trade-mark, for the "mark" must be different and separate from the thing marked.

No. 4711

_One of the oldest trade-marks in existence. Used for generations as
a trade-mark of Johann Maria Farina toilet preparations._

]

It would be unfair to give an exclusive right to use any particular color to an individual, consequently a color is not a valid trade-mark.

A seed-grower, selling his product in bags, applied for registration of a red bag as a trade-mark, but registration was refused.

A fountain pen manufacturer was refused registration for a trade-mark for fountain pens, consisting of a red feed bar contrasted with a black reservoir of hard rubber. The applicant stated that the feed bar was colored red in the manufacturing process, and that it was composed of rubber made by a special formula. The Court of Appeals held that registration of this device would give the applicant a virtual monopoly of this feature.

The Underwood Typewriter Co. applied for registration of the face-plate of their machine as a trade-mark. It is a principle of the trade-mark law that a part of a machine, or the form of an article, cannot be a valid trade-mark. Reporting this case, the Bulletin of the United States Trade-mark Association for January, 1908, says:

"The applicant, in the instance under adjudication, sought to
avoid this principle of law, by contending that the case did not
fall within that doctrine, for the reason that the plate which he
sought to register was not really a part of the machine, since it
could be removed without changing the shape of the machine, or
interfering with its operation, or altering its structure. It was
held, however, that while the plate performed none of the mechanical
functions of the machine it was nevertheless a part of the machine
as actually constructed, and was as essential as the frame itself
to the production of a commercial article. It was necessary to give
a finished appearance to the machine, which would not be salable
without it. To recognize the applicant's right to a trade-mark in
that feature of the machine, would enable the applicant to prevent
the manufacture of its machines as constructed to-day, after all the
patents covering it had expired, since no salable machine could be
produced without infringing the trade-mark."

Trade-Marks Are Not Registrable if against Public Policy

The common good takes precedence of the rights of individuals. This is a principle of equity which has run through the fabric of Anglo-Saxon law for a thousand years. We find it developed into diverse and widely separated forms. On one hand, it appears as the right of eminent domain; in another form we find it appearing in a law prohibiting the use of the national flag for advertising purposes.

This principle is observed by the Patent Office and the courts in dealing with questions relating to trade-marks.

A trade-mark, otherwise registrable, and consisting of a device or wording not prohibited by the statute, may be refused registration if opposed to public policy.

The application of the _Banner Cigar Mfg. Co._ (138 Official Gazette, 528) for registration of the portrait and facsimile signature of the late Ex-President Grover Cleveland as a trade-mark was refused, the Commissioner of Patents holding that the use of a trade-mark of this character would detract from the dignity of the high office of President.

The portrait and facsimile signature of Thomas Jefferson was refused registration on the same grounds.

It should be noted that there is no law to prevent any manufacturer desirous of using the name and portrait of an Ex-President (not living) as a trade-mark if he cares to do so, but _he cannot register such a trade-mark_, and his ability to protect it in the courts in case of infringement is conjectural.

The word "Copyright", the name of a brand of flour, was refused registration on the ground that its registration would be opposed to public policy, since its use in connection with the phrase "Registered in the United States Patent Office" would be likely to impress buyers with the idea that the flour had been approved officially. It was also stated by the Commissioner, before whom the application went on appeal, that its registration might be used to annoy other flour manufacturers, who are obliged by law to give notice of copyright on their labels, by using the word "Copyright" with the date and name of the owner.

The R. M. Rose Company was refused registration for the words "Ask the Revenue Officer" as a trade-mark for whiskey. The objection is that this trade-mark might lead purchasers to believe that the quality of the whiskey thus branded has the approval of the government.

For the same reason the word "Government" was refused registration as a trade-mark for loose-leaf binders.

Affixation

A trade-mark that is not affixed to the goods for which it is registered cannot be protected in the courts.

_A mark, or design, or name, that is used only in advertising is not a trade-mark but an advertising symbol._ Affixation is an essential requisite of validity in trade-marks.

SIMMONS
TRADE MARK
CHAINS AND FOBS

_The trade-mark word "Simmons" is affixed on chains by stamping it in
minute letters on the swivel of the chain._

]

The trade-mark may be written, or printed, or pasted, or stenciled, or branded, or woven, or sewed, upon the article with which it is used.

When it is not feasible to affix it to the article itself, as in case of liquids and many other commodities, the trade-mark must be affixed to the container.

Many ingenious devices are used by manufacturers in affixing trade-marks. The trade-mark "Brenlin", on Brenlin window shades, is placed upon every yard of the fabric in small perforated letters. The name appears near the selvage on each side of the goods.

The name "Aurora", applied to portieres and similar hangings, is to be found woven in the pattern of the fabric near the ends of each piece. The trade-mark blends into the pattern in such a way that it is inconspicuous, but may be readily found upon looking for it.

The London Feather Company's "London Plumes" trade-mark is cleverly affixed, being in the shape of a diminutive celluloid label, to the inside of the stem of each ostrich plume. The label is sewed on in such a manner that if it is cut out the plume falls apart.

LOWELL DUCK

_This trade-mark is stenciled on duck sail cloth._

]

Makers of clothing generally affix their trade-marks to each garment in the shape of a sewed label. Manufacturers of rubber goods, such as rubber tires, water bags, etc., mold the trade-mark into the article itself. The "Lowell Duck" trade-mark, used on sail cloth, is stenciled at regular intervals on the selvage. The Corticelli kitten, which is the registered trade-mark of Corticelli Spool Silk, appears on the label at the end of each spool.

Moet & Chandon, and other champagne producers, have adopted the unique method of affixing their trade-marks to the bottom of the corks of their bottles. The trade-mark is not seen, of course, until the bottle has been opened. This method of affixation has been sustained by the courts. The logic of it is that it prevents an unscrupulous retailer from washing the label off a bottle of wine and pasting a spurious label in its place, provided the purchaser knows where to look for the trade-mark.

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Things to Know About Trade-Marks: A Manual of Trade-Mark InformationChapter II: Essentials of a Valid Trade-Mark

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