Registration of trademarks under the new Trademark act of the United States

Front matter

Registration of Trademarks

UNDER THE

New Trademark Act

Preface

In the comparative study of Foreign Patent and Trademark Laws published a few years ago, I was compelled to point out, in referring to the trademark law of the United States, that such law, as embodied in the Act of 1881, did not give to registrants any remedy against infringers which the owner of an unregistered mark would not have under the common law, and that such law did not provide for giving force and effect to the provisions of the International Convention, as well as to call attention to the fact that such law was in other respects unsatisfactory.

The commercial interests of the country are to be congratulated on the fact that Congress has recently passed a new trademark act, which, while perhaps not all that could be desired, goes far toward giving the relief which the owners and users of trademarks have justly asked at the hands of Congress.

Some misapprehension of the intended meaning and purpose of this new Act as regards trademarks registered under the act of 1881, has arisen by reason of the fact that numerous circulars have been sent out to registrants urging re-registration, some of these circulars being so worded as to create the impression that re-registration is necessary to the preservation of existing rights, and that any delay in applying for re-registration may jeopardize such rights. Such an impression is not warranted by anything in the proposed trademark bill as originally drafted by me, on which the new act is based, and is not warranted by anything in the act as passed. It is the purpose of this pamphlet to correct this misapprehension, and, so far as possible at this time, to make clear the meaning of the act.

Washington, D ? C, March 1, 1905.

Contents

Page.

The New Trademark Act 7

The Purpose of the New Act 8

I

those used in foreign commerce, and commerce with the Indian tribes. It was the opinion of Thomas Jefferson, expressed in a report made by him to the Second Congress, that the regulation of trademarks used in commerce "among the several States" was within the power of Congress. Recent decisions of the Supreme Court bearing upon the subject of what constitutes interstate commerce, and the constitutional power of Congress in respect to the regulation of such commerce, warrant the belief that there can be no serious question of the power of Congress to provide for the registration of trademarks used in interstate commerce.

This section follows the Act of 1881 in limiting the right of registration by foreign owners of trademarks to those located in countries with which reciprocal arrangements in this regard have been established. It is desirable and important in the interests of foreign trade that such arrangements be entered into with any and every foreign country in which American manufacturers may seek a market for their goods, but such arrangements can be secured only on the basis of reciprocity. To give to foreigners generally the same rights as are given to American owners of trademarks would make it possible for foreign countries to exclude our manufacturers from the advantages of their trademark laws without detriment to the interests of their own manufacturers.

Sec. 2. That the application prescribed in the fore-' going section, in order to create any right whatever in favor of the party filing it, must be accompanied by a written declaration verified by the applicant, or by a member of the firm or an officer of the corporation or association applying, to the effect that the applicant believes himself or the firm, corporation, or association in whose behalf he makes the application to be the owner of the trademark sought to be registered, and that no other person, firm, corporation, or association, to the best of the applicant's knowledge and belief, has the right to such use, either in the identical form or in such near resemblance thereto as might be calculated to deceive; that such trademark is used in commerce among the several States, or with foreign nations, or with Indian tribes, and that the description and drawing presented truly represent the trademark sought to be registered. If the applicant resides or is located in a foreign country, the statement required shall, in addition to the foregoing, set forth that the trademark has been registered by the applicant, or that an application for the registration thereof has been filed by him in the foreign country in which he resides or is located, and shall give the date of such registration, or the application therefor, as the case may be, except that in the application in such cases it shall not be necessary to state that the mark has been used in commerce with the United States or among the States thereof. The veri- v fication 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, charge 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.

The first part of this section is substantially identical in its requirements with Section 2 of the Act of 1881.

The second part prescribes the declaration to be made by a foreign owner of a trademark. As the right of a foreign citizen or subject to the protection for his trademark is secured to him by treaty while the right of the applicant who is domiciled in the United States to protection necessarily depends upon his use of the mark in such commerce as is within Congressional control, it is evident that the facts necessary to be shown in the one case are not the same as in the other. The requirement that the foreign applicant show affirmatively that he has regularly filed an application for registration of his trademark in the country in which he is located is necessary as a prima facie showing that he is in fact the owner of the mark. Such a requirement is found in the laws of nearly all foreign countries.

While it is believed that it would be desirable to dispense with the requirement that an applicant for registration make oath as to the facts which entitle him to be considered the owner of the trademark for which he seeks registration, it does not appear that this can be done in view of the fact that only those trademarks which are used in interstate or foreign commerce or commerce with the Indian tribes are within the regulating power of Congress. It therefore appears that in order to be entitled to\ registration the applicant must make a prima facie showing that he has satisfied the conditions necessary to bring his trademark within the class of trademarks which may be registered.

The section as drawn recognizes as entitled to registration trademarks used by associations, following in this respect the laws of many of the foreign countries as well as the laws of many of the States of the United States.

The final sentence of the section specifies before whom the declaration may be made, following in its language section 4892 of the Revised Statutes.

Sec. 3. That every applicant for registration of a trademark, or for renewal of registration of a trademark, who is not domiciled within the United States, shall, before the issuance of the certificate of registration, as hereinafter provided for, designate by a notice in writing, filed in the Patent Office, some person residing within the United States on whom process or notice of proceedings affecting the right of ownership of the trademark of which such applicant may claim to be the owner, brought under the provisions of this Act or under other laws of the United States, may be served, with the same force and effect as if served upon the applicant or registrant in person. For the purposes of this Act it shall be deemed sufficient to serve such notice upon such applicant, registrant, or representative by leaving a copy of such process or notice addressed to him at the last address of which the Commissioner of Patents has been notified.

The purpose of this section is to require applicants for registration of trademarks who reside out of the jurisdiction of the United States courts to place themselves constructively within such jurisdiction. Being given the advantages of the laws of the United States so far as bringing suits against others for the protection of their rights to their trademarks, they should submit to the jurisdiction of the courts of the United States in case suits affecting their rights to their trademarks are brought against them.

Such a provision is contained in the trademark laws of many, in fact nearly all, of the countries of commercial importance.

Sec. 4. That an application for registration of a trademark filed in this country by any person who has previously regularly filed in any foreign country which, by treaty, convention, or law, affords similar privileges to citizens of the United States an application for registration of the same trademark shall be accorded the same force and effect as would be accorded to the same application if filed in this country on the date on which application for registration of the same trademark was first filed in such foreign country : Provided, That such application is filed in this country within four months from the date on which the application was first filed in such foreign country : And provided, That certificate of registration shall not be issued for any mark for registration of which application has been filed by an applicant located in a foreign country until such mark has been actually registered by the applicant in the country in which he is located.

This is intended to provide for giving full force and effect to article 4 of the International Convention, which, so far as it relates to trademarks, is as follows :

"Art. 4. Anyone who shall have regularly deposited an application for a * * * trade or commercial mark in one of the contracting States shall enjoy for the purpose of making the deposit in the other States, and under reserve of the rights of third parties, a right of priority during the periods hereinafter determined.

"In consequence, the deposit subsequently made in one of the other States of the Union before the expiration of these periods cannot be invalidated by acts performed in the interval, especially by another deposit, * * * by the employment of the mark.

"The periods of priority above mentioned shall b e * * * three months for trade or commercial marks. They shall be augmented by one month for countries beyond the seas."

Sec. 5. That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trademark on account of the nature of such mark unless such mark —

(a) Consists of or comprises immoral or scandalous matter;

(b) Consists of or comprises 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: Provided, That trademarks which are identical with a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, shall not be registered: Provided, That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term, shall be registered under the terms of this Act: Provided further, That no portrait of a living individual may be registered as a trademark, except by the consent of such individual, evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registra-\ tion of any mark used by the applicant or his prede- y cessors, or by those from whom title to the 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 trademark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this Act.

The Committee on Patents of the House of Representatives, in their report recommending the passage of the. Act, make the following statement in reference to this section:

In the past there has been considerable complaint in regard to what could be registered under the existing law as a trademark. Much of the time of the committee in the hearing of the bill has been consumed in a discussion upon this particular feature of the legislation. Section 5 of the proposed bill, we believe, will permit the registration of all marks which could, under the common law as expounded by the courts, be the subject of a trademark and become the exclusive property of the party using the same as his trademark.

The language of section 5 is taken almost verbatim from section 5 of the bill proposed by Mr. Arthur P. Greeley, as contained in the report of the Commissioners appointed to revise the statutes relating to patents, trade and other marks, and trade and commercial names, under the Act of Congress approved June 4, 1898. Full protection is given by the court, under the doctrine of unfair competition, to the users of such marks as do not, under the common law, constitute technically what is known as a trademark, and which can become the subject of exclusive ownership. By other sections of the bill, to which attention will be called later, provision is made for an appeal from the decision of the Commissioner of Patents to the District Court of the District of Columbia from a decision refusing the registration of a trademark. By these provisions of the bill it would seem that there could not be a conflict of decisions, about which so much complaint has been made in the past.

Through the decisions of the courts a uniform system and uniform rules governing and controlling the registration of marks will in time be adopted.

A proviso has been added permitting all marks that have been in actual use as trademarks for a period of ten years to be registered.

The added proviso is intended to cover substantially the same ground that is covered by the Act of August 5, 1882, which is as follows:

"That nothing contained in the law entitled 'An Act to authorize the registration of trademarks and protect the same,' approved March third, eighteen hundred and eighty-one, shall prevent the registry of any lawful trademark rightfully used by the applicant in foreign commerce or commerce with Indian tribes at the time of the passage of said Act."

This Act is similar to, and no doubt was suggested by, the provisions of the British trademark law in reference to what are known as "old marks ;" that is, marks in use prior to the date of the passage of the first law which provided for registration of trademarks and defined what should be registrable as trademarks. This provision is found in section 64 of the Patents, etc., Acts, 1883-1888, and is as follows:

"(3) Provided as follows:

"(ii) Any special and distinctive word or words, letter, figure, or combination of letters or figures or of letters and figures, used as a trademark before the thirteenth day of August, one thousand eight hundred and seventy-five, may be registered as a trademark under this part of this Act."

This is in recognition of the fact that by longcontinued use in public a mark which at the date of its adoption might be open to objection as being descriptive or geographical or otherwise not so far arbitrary or fanciful as to be capable at once of exelusive appropriation, may become known to the public as the distinctive mark of its user, and has therefore come to be of value to him, and of the necessity in the interests of fair competition in trade of giving to such "old marks" the protection given to marks which are technically trademarks. Without such a provision, such marks not being registrable in this country would not be registrable in the foreign countries which require registration here as a condition precedent to protection there, and such requirement is made by the laws of most foreign countries.

Sec. 6. That on the filing of an application for registration of a trademark which complies with the requirements of this Act, and the payment of the fees herein provided for, the Commissioner of Patents shall cause an examination thereof to be made ; and if on such examination it shall appear that the applicant is entitled to have his trademark registered under the provisions of this Act, the Commissioner shall cause the mark to be published at least once in the Official Gazette of the Patent Office. Any person who believes he would be damaged by the registration of a mark may oppose the same by filing notice of opposition, stating the grounds therefor, in the Patent Office within thirty days after the publication of the mark sought to be registered, which said notice of opposition shall be verified by the person filing the same before one of the officers mentioned in section two of this Act If no notice of opposition is filed within said time the Commissioner shall issue a certificate of registration therefor, as hereinafter provided for. If on examination an application is refused, the Commissioner shall notify the applicant, giving him his reasons therefor.

The Committee on Patents of the House of Representatives, in their report recommending the passage of the Act, state as follows in reference to the above section:

The procedure provided by the bill for the registration of trademarks is similar in many respects to the procedure in patent cases. When the application for registration is filed section 6 provides for an examination of the mark offered for registration. If upon such examination the application is refused, notice is given to the applicant, in order that he may appeal, if he so desires, from the decision. The procedure for appeals is regulated by other sections of the bill. If, on the other hand, the examination discloses that the mark is entitled to registration, then the Act provides that the Commissioner shall cause the mark to be published at least once in the Official Gazette of the Patent Office. The purpose of this publication is apparent. Owners of trademarks ought not to have their rights to the use of a trademark jeopardized by the registration of similar trademarks by other parties not entitled to the use of the same. Some notice should be given whereby the true owners of marks may have an opportunity to be heard by the Commissioner of Patents before any mark is registered and given, by reason of such registration, the evidence of ownership provided for by the terms of the bill.

Sec. 7. That in all cases where notice of opposition has been filed the Commissioner of Patents shall notify the applicant thereof and the grounds therefor.

Whenever application is made for the registration of a trademark which is substantially identical with a trademark appropriated to goods of the same descriptive properties, for which a certificate of registration has been previously issued to another, or for registration of which another has previously made application, or which so nearly resembles such trademark, or a

R« known trademark owned and used by another, as, in the opinion of the Commissioner, to be likely to be mistaken therefor by the public, he may declare that an interference exists as to such trademark, and in every case of interference or opposition to registration he shall direct the examiner in charge of interferences to determine the question of the right of registration to such trademark and of the sufficiency of objections to registration, in such manner and upon such notice to those interested as the Commissioner may by rules prescribe.

The Commissioner may refuse to register the mark against the registration of which objection is filed, or may refuse to register both of two interfering marks, or may register the mark, as a trademark, for the person first to adopt and use the mark, if otherwise entitled to register the same, unless an appeal is taken, as hereinafter provided for, from his decision, by a party interested in the proceeding, within such time (not less than/ twenty days) as the Commissioner may prescribe.

Except as regards opposition, which is a new feature of the trademark law, this section is merely declaratory of the practice as followed under the Act of 1881.

Sec. 8. That every applicant for the registration of a trademark, or for the renewal of the registration of a trademark, which application is refused, or a party to an interference against whom a decision has been rendered, or a party who has filed a notice of opposition as to a trademark, may appeal from the decision of the examiner in charge of trademarks, or the examiner in charge of interferences, as the case may be, to the Commissioner in person, having once paid the fee for such appeal.

This section provides for an appeal direct to the * / Commissioner. Except that it requires a fee v ($15 as specified in section 14) for such appeal, it is merely declaratory of the practice followed under the Act of 1881. In its wording the section closely follows Sec. 4909 of the Revised Statutes, which relates to appeals in applications for patent.

Sec. 9. That if an applicant for registration of a trademark, or a party to an interference as to a trademark, or a party who has filed opposition to the registration of a trademark, or party to an application for the cancellation of the registration of a trademark, is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the court of appeals of the District of Columbia, on complying with the conditions required in case of an appeal from the decision of the Commissioner by an applicant for patent, or a party to an interference as to an invention, and the same rules of practice and procedure shall govern in every stage of such proceedings, as far as the same may be applicable.

This section corresponds in terms with section 491-1 of the Revised Statutes relating to appeals from the decision of the Commissioner of Patents in applications for patent as modified by the Act of February 9, 1893, creating the court of appeals of the District of Columbia.

The Act of 1881 does not provide for an appeal from the decision of the Commissioner of Patents in trademark cases. As such cases often involve interests quite as valuable as are involved in applications for patent, it would seem that appeals if provided for in the one class of cases should be provided for in the other class.

See in this connection the note to section 5.

Sec. 10. That every registered trademark, and every mark for the registration of which application has been made, together with the application for registration of the same, shall be assignable in connection with the good will of the business in which the mark is used. Such assignment must be by an instrument in writing and duly acknowledged according to the laws of the country or State in which the same is executed; any such assignment shall be void as against any subsequent purchaser for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months froni date thereof. The Commissioner shall keep a record of such assignments.

Section 12 of the Act of 1881 authorizes the Commissioner to record transfers of the right to use trademarks.

There is no restriction upon such transfers in the Act of 1881. But it is well settled that the property right to a trademark is not transferable except with the transfer of the right to manufacture or sell the particular merchandise to which the trademark has been attached. (See Filkins v. Blackman, 13 Blatchford, 440, quoting Dixon Crucible Company v. Guggenheim, Am. Trademark Cases, 559.)

Sec. 11. That certificates of registration of trademarks shall be issued in the name of the United States of America, under the seal of the Patent Office, and shall be signed by the Commissioner of Patents, and a record thereof, together with printed copies of the drawing and statement of the applicant, shall be kept in books for that purpose. The certificate shall state the date on which the application for registration was received in the Patent Office. Certificates of registration of trademarks may be issued to the assignee of the applicant, but the assignment must first be entered of record in the Patent Office.

Written or printed copies of any records, books, papers, or drawings relating to trademarks belonging to the Patent Office, and of certificates of registration, authenticated by the seal of the Patent Office and certified by the Commissioner thereof, shall be evidence in all cases wherein the originals could be evidence; and any person making application therefor and paying the fee required by law shall have certified copies thereof.

This section is almost identical with section 4 of the Act of 1881, except that it provides that the certificate of registration shall be under the seal of the Patent Office instead of under the seal of the Department of the Interior. The certificates are to be issued by the Commissioner of Patents, who should attach his seal, which is under his control, rather than the seal of the Department of the Interior.

The second paragraph of this section corresponds in terms with the provisions of Section 892 of the Revised Statutes in reference to certified copies of the records of the Patent Office.

Sec. 12. That a certificate of registration shall remain in force for twenty years, except that in the case of trademarks previously registered in a foreign country such certificates shall cease to be in force on the day on which the trademark ceases to be protected in such foreign country, and shall in no case remain in force more than twenty years, unless renewed. Certificates of registration may be, from time to time, renewed for like periods on payment of the renewal fees required by this Act, upon request by the registrant, his legal representatives, or transferees of record in the Patent Office, and such request may be made at any time not more than six months prior to the expiration of the period for which the certificates of registration were issued or renewed. Certificates of registration in force at the date at which this Act takes effect shall remain in force for the period for which they were issued, but shall be renewable on the same conditions and for the same periods as certificates issued under the provisions of this Act, and when so renewed shall have the same force and effect as certificates issued under this Act.

By this section of the Act the life of a certificate of registration is changed from thirty years to twenty years. The purpose of this change is to make the term of such registration correspond with the term for which registration is granted by the international union for the registration of trademarks. The right to the use of a trademark is perpetual, so long as the same is actually used in commerce. Such perpetual ownership of a mark is provided for by means of renewals of certificates, upon application made in accordance with the terms of the proposed bill.

The change in the term is coupled with a reduction of the fee for registration, from $25 to $10 (See Sec. 14). Failure to renew registration is, in foreign countries, taken to mean abandonment of the claim of right to the mark. While failure to renew need not be taken as abandonment of whatever rights the registrant may have under the common law, it should be taken as an abandonment of whatever rights may accrue from registration. Many trademarks are, as a matter of fact, abandoned within a few years after their first adoption, and it is in the interest of the public that marks which have thus ceased to be the subject of a claim of exclusive right should be dropped from the register within a shorter period than the thirty years for which certificates of registration were granted under the Act of 1881.

The provision with respect to trademarks previously registered in a foreign country is substantially the same in effect as the provision contained in the Act of 1881. The right of foreign trademark owners to the benefits of the law of the United States rests on treaty agreements, and it is expressly stipulated in many of these treaties that trademarks shall cease to be protected here when they cease to be exclusive property in the country in which they originate. Substantially the same provision is contained in the trademark laws of most foreign countries.