mark owned by another, &c. It also provides that applicant shall state under oath that he has the right to use such trade-mark, and that no other person, firm, or corporation has the right to such use, either in the identical form or in any such near resemblance thereto as might be calculated to deceive. In my judgment, it is clearly wrong, in view of the effect which would result, to read the statute as if the words "in commerce with foreign nations or Indian tribes" were interpolated after the word "registered," and after the word "deceive" in the second section, and after the word "merchandise" and after the word "purchasers" in the third section. Such construction could not have been intended by Congress. On the contrary, no applicant may register a trade-mark unless he can establish, first, that he has the right to use it, and no one else has; second, that it is not identical with the registered or known trade-mark of another person; and beyond this he must show that he is using the trade-mark which he so owns in commerce with foreign nations or Indian tribes. The ownership does not give the United States jurisdiction. It is the use in commerce with foreign nations or Indian tribes that confers it. But the statute makes not merely the use but also the exclusive ownership a prerequisite to registration. To give the statute the construction contended for is to use the law, not to prevent fraud and imposition, but to shield and protect both. The proposition that an owner of a trade-mark may assert his common-law right, nowithstanding registration by another, is not of importance in determining the question here presented. It is a novel 'suggestion that the statute of the United States authorizes one party to appropriate the property of another unless the common law can afford a remedy to prevent it, which the court will utilize to that end.

In passing upon the sufficiency of the reference I endeavor to act upon principles of common sense. The registration of Imbs, Meyer & Co. was complete under the law of 1870, and established not only title to the trade-mark in controversy, but that they had been using it for ten years. There is no pretense that that record does not disclose the exact truth. The point made is that the law under which that solemn act took place and the record of it was made up was unconstitutional, and, ergo, I must shut my eyes to what that record discloses. But the statute says that applicant shall not be entitled to registration of a trade-mark which is identical, or substantially identical, with the registered or known trade mark of another. This record discloses to me that applicants are seeking to register substantially the known trade-mark of another-to wit, that of Imbs, Meyer & Co. It is true that these parties may have abandoned their trade-mark, but abandonment is not to be presumed. If it had become worthless, no other person would have sought to appropriate it, or that which is substantially identical with it.

It is said that to act upon the record of registration made under the law of 1870 would be, in effect, the same as citing a rejected application 9373 PAT- 3

for a patent. This is error. If there is any similarity, it is more like citing a patent itself, and the full record of public use. To decide otherwise would be to open Pandora's box aud turn loose fraud upon individuals and imposition upon the public. On the other hand, the construction I give the statute cannot work any hardship. Certainly it is no injustice to an applicant to require him fairly to establish that he is the owner of the property he seeks to appropriate as his own. If a former registrant has abandoned his property, it is easy to ascertain and prove the fact. If applicants have by purchase or otherwise legally acquired the right to the property, it could not be difficult to establish that fact.

It is contended that the registration of a trade-mark confers no title thereto. Neither does the registration of a deed to land confer title. But the certified transcript of the record is evidence of title, and the statute permits registration of a trade-mark as a means of preserving in a public record evidence of ownership, and since it is evidence of ownership care has been taken in the statute to provide against fraudalent registration.

It is said that I am giving the registration under the law of 1870 the same force and effect as if it had been made under the statute of 1881. This is palpable error. I find here in this Office a public record-public in the sense that is open and notorious, and may be seen and read by all men-in which is recorded a fac-simile of trade-marks, with a full statement of ownership, and period of use, &c., all under the sanction of an oath. This public record discloses that Imbs, Meyer & Co., in 1876, registered a trade-mark, proved that it was their property; that they were using it attached to flour; that they had been so using it for ten years next preceding the date of their application for registra tion. Now, I do not hold that that registration has the force and effect of a registration made under the present law. Nothing of the kind. But I do hold that I am properly authorized under the provision of Section 3 of the act of 1881, and by the true spirit and intent of the whole statute, which is to prevent and not to connive at fraud and imposition, to take notice of the facts recited in that record, in determining "the presumptive lawfulness of claim to the alleged trade-mark" by the ap plicants. I hold, therefore, that the Examiner was clearly justified in rejecting applicant's petition of registration on the reference of Imbs, Meyer & Co., which disclosed that they were and had been for mauy years using that identical trade-mark, or one substantially the same, on flour; that they had been so using it for a long time before the applicant's claim to have known of it or sought to use it.

The decision of the Examiner is approved and affirmed.

EX PARTE MOODIE.

Decided September 22, 1884.

28 O. G., 1271.

1. Congress intended to devolve upon the Commissioner of Patents the duty of determining the character of the subject-matter offered for registration under the label and trade-mark law.

2. The proper construction of the statute is that the subject-matter of an application for a label shall be that which may be properly claimed as a label, and not be merely subject-matter for a trade-mark.

3. But the statute does not mean to imply that if certain subject-matter is found to be incapable of registration as a trade-mark it can nevertheless be registered as a label, for it may not be descriptive of the quality or nature of the goods, and therefore fail to constitute a label.

4. In the case at bar the Examiner properly refused to register as a label matter which gaged by the established rules, constitutes only subject-matter for a trade-mark. APPEAL from the Primary Examiner.

REGISTRATION OF A LABEL.

Elhanan L. Moodie's application filed April 9, 1884.

Messrs. Goepel & Raegener for appellant.

BUTTERWORTH, Commissioner:

This case brings up before me for consideration two questions: First, has the Commissioner of Patents discretionary power under the statute to refuse to register as a label what, in his opinion, is subject-matter only for a trade mark? Secondly, if matter offered for registration as a trade-mark be not a trade mark, by reason of non-adoption and use as such, may it therefore be registered as a label, although not coming within the known and recognized definition of the term label?

As to the first point, I am satisfied that Congress intended to devolve upon the Commissioner of Patents the duty of determining the character of the subject-matter offered for registration under the trade mark and label law. Section 3 of chapter 301, Revised Statutes, contains the following clause: "except that there shall be paid for recording the title of any print or label not a trade mark, six dollars," &c. The words "not a trade-mark" plainly indicate that some one must decide whether or not the proffered label is really nothing but a label. Who is to determine this: The same section says:

And the Commissioner of Patents is hereby charged with the supervision and control of the entry or registry of such prints or labels," &c.

The trade-mark law of 1881, in section 3, speaks of the "alleged trademark." The whole tenor of the statutes is that the Commissioner of Patents shall determine the question of fact in executing the law-viz, as to whether or not the alleged trade-mark is actually a trade-mark; otherwise the Office would be registering as trades-marks matter which the courts would unhesitatingly declare to be only labels, and vice versa.

Much confusion and hardship might readily arise where parties are relying for pretection upon a mere label, believing it to be a valid trademark, because registered as such. Cases have arisen in the courts where parties have sued for infringement of an alleged trade-mark which, upon investigation, turned out to be nothing more than a label. (Cheavin v. Walker, Cox's Manuel of Trade-Mark Cases, p. 294; Gilman v. Hunnewell, Id., 303.) Yet, if the Office is to blindly accept the opinion of the applicant as to whether he has a trade mark or a label, or be governed by his preference as to what he will call the subject-matter of ti.e application, incidents of this sort must inevitably continue to arise, and the Patent Office would be in the unenviable position of deliberately misleading the public, whose servant it is. In such an abstract matter as this there are likely to be many differences of opinion among persons unfamiliar with the law, however well settled the principles may be upon which a right decision must be based. The courts are sometimes confusingly loose in their language respecting trade-marks, classing as such what are really but labels. It would conduce, therefore, to greater uniformity and regularity in the practice of the office to have some one person decide whether or not an "alleged trade-mark" is actually what it is alleged to be. It seems to me that Congress so intended.

I am aware of the decision of the Supreme Court of the District of Columbia in The United States, ex. rel., The Wilcox & Gibbs Sewing Machine Co., v. E. M. Marble, (22 O. G., 1366.) But that was practically an ex parte proceeding and not fully argued, and, as I conceive, did not have careful consideration. The transfer to the Commissioner of Patents of the supervision and control of the entry or registry of prints or labels designed to be used for articles of manufacture, not pictorial illustrations or works, was evidently for the purpose of bringing them under the control of the officer who registered trade-marks. Why? Because trade-marks and labels are so intimately connected that confusion might arise were they supervised by separate and independent officials. Furthermore, the fee for registering such prints or labels was at the same time raised from one dollar to six dollars. This was evidently in view of some extra work which would be entailed in the entry or registry of these prints or labels. If simple registry were all that were necessary why was not the same fee charged as for registering other prints or labels by the Librarian of Congress? It seems more reasonable to view the extra fee as an equivalent for additional labor, which can be no other than an investigation of the alleged label to see whether it does not in fact amount only to the subject-matter of a trade-mark. The act requires this fee of six dollars to be paid for the registry of any label "not a trade-mark." Why are these three words added? Because a different fee is required for the registry of a trade-mark, and it is to guard against the registry of one for the other that both are placed in the hands of one officer. An expert in both, he better than any one else, can determine which fee the applicant shall pay and the Govern

ment receive in any given case. The act inferentially says that any alleged print or label which is a trade mark shall pay the trade-mark fee, instead of the six dollars charged for a print or label "not a trademark." I am aware that it is urged that adoption and use are essential to a trade-mark; that before any symbol or device can be desig Dated a trade mark it must have been adopted by some person, firm or corporation, and used in connection with some article of merchandise. That is true. But it does not follow that that which is only a symbol or sign, and does not in any wise indicate the contents of the package, &c., which is the plain office of a label, can be denominated or made the subject-matter of a label. In other words, it does not follow because a certain symbol or device is not a trade-mak, because it has not been adopted and used as such, it may therefore be registered as a label, in the absence of those characteristics and essentials which are inseparable from a label under every known and recognized definition of the term "label." And here is the fallacy of the argument presented to me in this case. It is assumed that because the device or symbol presented for registration is not a trade-mark, because of non-use as such, that therefore it may be registered as a label, simply because the applicant is pleased to call it a label and prefers to register it as such. This is fallacious. It does not have the requirements of a label and it has none of the elements of a label, but is the subject-matter of a trade-mark ander every known definition of a trade-mark.

If the argument of counsel in this case is correct, the definition of what is known in law as a "label" and what is known as a “trademark" amount to nothing. They can in no wise serve as a guide in determining what is a label and what the subject-matter of a trade-mark. It is all to be determined and definitely settled by the simple preference of the applicant. He may present to this office what is well known to be subject-matter for a trade-mark which presents not one of the elements of a label, and simply because he is pleased to call it a "label" it is to be registered as such.

I am aware also that a point can be made on the peculiar phraseology of the statute where the phrase is used, "except that there shall be paid for the title of any print or label, not a trade-mark, six dollars," &c. It may be said that to be a trade-mark, in contemplation of this language, it must have been used as such. I dissent entirely from that proposition, for that involves the absurdity I have before mentioned, that to be a label and have the necessary characteristics of such it is only necessary that the applicant call the subject-matter of his application a label. The better construction of the statute, and the proper one, it seems to me, is that the subject-matter of an application shall be that which may be properly claimed as a label and not be merely subject-matter for a trademark.

The second part of this inquiry follows naturally upon what has been said above.

The characteristics of a trade-mark are well settled and