nations or among the several States or with Indian tribes, and to protect the same." Sections 2-30 of the act are set forth post, §§ 9487-9511, 9513-9516. This section, as originally enacted, contained, after the words "description of goods comprised in such class to which the trade-mark is appropriated," as a further clause, the words "a description of the trade-mark itself"; and to this clause was added, by the amendment of the section by Act May 4, 1906, c. 2081, § 1, cited above, the words "only when needed to express colors not shown in the drawing." Section 4 of said amendatory act of May 4, 1906, c. 2081, provided that the act should take effect July 1, 1906. By further amendment of this section by Act Feb. 18, 1909, c. 144, last cited above, the whole of said clause previously amended was omitted, and after the sentence next following it was inserted the provision, "a description of the trade-mark itself shall be included, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the Commissioner," making the section read as set forth here. This act superseded the Trade-Mark Act of March 3, 1881, c. 138, 21 Stat. 502, entitled "An act to authorize the registration of trade-marks and protect the same," and also Act Aug. 5, 1882, c. 393, 22 Stat. 298, entitled "An act relating to the registration of trade-marks." Section 30, of this act, post, § 9516, repealed all inconsistent acts and parts of acts, except so far as they might apply to certificates of registration issued under the Trade-Mark Act of March 3, 1881, c. 138, and Act Aug. 5, 1882, c. 398. Said Trade-Mark Act of March 3, 1881, c. 138, was as follows: "Be it enacted, &c. That owners of trade-marks used in commerce with foreign nations, or with the Indian tribes, provided such owners shall be domiciled in the United States, or located in any foreign country or tribes which by treaty, convention or law, affords similar privileges to citizens of the United States, may obtain registration of such trade-marks by complying with the following requirements: "First. By causing to be recorded in the Patent Office a statement specifying name, domicile, location, and citizenship of the party applying; the class or merchandise and the particular description of goods comprised in such class to which the particular trade-mark has been appropriated; a description of the trade-mark itself, with fac-similes thereof, and a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trade-mark has been used. "Second. By paying into the Treasury of the United States the sum of twenty-five dollars, and complying with such regulations as may be prescribed by the Commissioner of Patents. "Sec. 2. That the application prescribed in the foregoing section must, in order to create any right whatever in favor of the party filing it, be accompanied by a written declaration verified by the person, or by a member of a firm, or by an officer of a corporation applying, to the effect that such party has at the time a right to the use of the trade-mark sought to be registered, 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; that such trade-mark is used in commerce with foreign nations or Indian tribes, as above indicated; and that the description and facsimiles presented for registry truly represent the trade-mark sought to be registered. "Sec. 3. That the time of the receipt of any such application shall be noted and recorded. But no alleged trade-mark shall be registered unless the same appear to be lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes as above mentioned or is within the provision of a treaty, convention, or declaration with a foreign power; nor which is merely the name of the applicant; nor which is identical with a registered or known trade-mark owned by another and appropriate to the same class of merchandise, or which so nearly resembles some other person's lawful trademark as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers. In an application for registration the Commissioner of Patents shall decide the presumptive lawfulness of claim to the alleged trade-mark; and in any dispute between an applicant and a previous registrant, or between applicants, he shall follow, so far as the same may be applicable, the practice of courts of equity of the United States in analogous cases. "Sec. 4. That certificates of registry of trade-marks shall be issued in the name of the United States of America, under the seal of the Department of the Interior, and shall be signed by the Commissioner of Patents, and a record thereof, together with printed copies of the specifications, shall be kept in books for that purpose. Copies of trade-marks and of statements and declarations filed therewith and certificates of registry so signed and sealed shall be evidence in any suit in which such trade-marks shall be brought in controversy. "Sec. 5. That a certificate of registry shall remain in force for thirty years from its date except in cases where the trade-mark is claimed for and applied to articles not manufactured in this country, and in which it receives protection under the laws of a foreign country for a shorter period, in which case it shall cease to have any force in this country by virtue of this act at the time that such trade-mark ceases to be exclusive property elsewhere. At any time during the six months prior to the expiration of the term of thirty years such registration may be renewed on the same terms, and for a like period. "Sec. 6. That applicants for registration under this act shall be credited for any fee, or part of a fee, heretofore paid into the Treasury of the United States with intent to procure protection for the same trade-mark. "Sec. 7. That registration of a trade-mark shall be prima facie evidence of ownership. Any person who shall reproduce, counterfeit, copy or colorably imitate any trade-mark registered under this act and affix the same to merchandise of substantially the same descriptive properties as those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said trade-mark, at the suit of the owner thereof; and the party aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of such trade-mark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases without regard to the amount in controversy. "Sec. 8. That no action or suit shall be maintained under the provisions of this act in any case when the trade-mark is used in any unlawful business, or upon any article injurious in itself, or which mark has been used with the design of deceiving the public in the purchase of merchandise, or under any certificate of registry fraudulently obtained. "Sec. 9. That any person who shall procure the registry of a trade-mark, or of himself as the owner of a trade-mark or an entry respecting a trademark, in the office of the Commissioner of Patents, by a false or fraudulent representation or declaration, orally or in writing, or by any fraudulent means, shall be liable to pay any damages sustained in consequence thereof to the injured party, to be recovered in an action on the case. "Sec. 10. That 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. "Sec. 11. That nothing in this act shall be construed as unfavorably affecting a claim to a trade-mark after the term of registration shall have expired; nor to give cognizance to any court of the United States in an action or suit between citizens of the same State, unless the trade-mark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe. "Sec. 12. That the Commissioner of Patents is authorized to make rules and regulations and prescribe forms for the transfer of the right to use trademarks and for recording such transfers in his office. "Sec. 13. That citizens and residents of this country wishing the protection of trade-marks in any foreign country, the laws of which require registration here as a condition precedent to getting such protection there, may register their trade-marks for that purpose as is above allowed to foreigners, and have certificate thereof from the Patent Office." Said Act Aug. 5, 1882, c. 393, was as follows: "Be it enacted, &c., That nothing contained in the law entitled 'An act to authorize the registration of trade-marks and protect the same,' approved March third, eighteen hundred and eighty-one, shall prevent the registry of any lawful trade-mark rightfully used by the applicant in foreign commerce or commerce with Indian tribes at the time of the passage of said act." The Commissioner of Patents was authorized to make regulations for proceedings for registration of trade-marks under this act, by section 26 thereof, post, 9511. Provisions for the protection of trade-marks on foreign articles, etc., exhibited at the Panama-Pacific International Exposition were made by Act Sept. 18, 1913, c. 14, §§ 2-6, post, §§ 9525-9529. Provisions for extension of time for filing applications for the registration of any trade-mark, print, or label were made by Act Aug. 17, 1916, c. 350, ante, §§ 9438a-9438c. of 1. Constitutionality trade-mark legislation.-Act 1881, c. 138, superseded by this act, was held valid, as applying only to interstate commerce. Hennessy v. Braunschweiger & Co. (C. C. 1898) 89 Fed. 664, 666; Brennan v. Emery-Bird-Thayer Dry Goods Co. (C. C. 1900) 99 Fed. 971, 973. Congress had power under Const. art. 1, § 8, cl. 3, authorizing it to regulate foreign and interstate commerce and commerce with the Indian tribes, to enact the trade-mark laws. Rossmann v. Garnier (1914) 211 Fed. 401, 128 C. C. A. 73. The monopoly given the owner of a trade-mark by the trade-mark laws is not forbidden by the Sherman Act or any other act of Congress. Coca-Cola Co. v. J. G. Butler & Sons (D. C. 1916) 229 Fed. 224. The power of the general government does not extend to trade-marks under any express provision of the Constitution, but only so far as may be incidental to other subjects over which it has jurisdiction. Traiser v. J. W. Doty Cigar Co. (1908) 84 N. E. 462, 198 Mass. 327. The power to regulate trade-marks finds its authority under the commerce clause of the federal Constitution. Oneida Community v. Oneida Game Trap Co. (1915) 154 N. Y. S. 391, 168 App. Div. 769, affirming judgment (1914) 150 N. Y. S. 918. V. Legislation by congress upon the subject of trade-marks cannot be sustained under the power to legislate in favor of authors and inventors, nor under the power to regulate commerce, and Act July 8, 1870, on this subject, is unconstitutional. Leidersdorf Flint (C. C. 1878) Fed. Cas. No. 8,219. The statute of 1870 concerning registration of trade-marks having been declared unconstitutional, in 1881 a valid statute was enacted, touching the same subject, which did not re-enact the penal statute of 1876, and made no reference thereto. Held, that the penal statute fell with that of 1870, and did not remain suspended, to become operative under the statute of 1881. U. S. v. Koch (C. C. 1889) 40 Fed. 250. Act 1876, §§ 4, 5, prohibiting the infringement of trade-marks, and declaring any infringer punishable, was held unconstitutional, since a trade-mark is not an invention, discovery or writing within Const. art. 1, § 8, cl. 8, giving congress power to secure exclusive rights of authors and inventors to their respective writings or discoveries, nor is such legislation within the clause of the constitution giving congress the right to regulate commerce between the states, with foreign nations, and In dian tribes. U. S. v. Steffens (1879) 100 U. S. 82, 25 L. Ed. 550. The original trade-mark act contained in R. S. §§ 4937-4947, was held unconstitutional because not confined to commerce over which congress had power to legislate. Id. The act of Congress assuming to confer exclusive jurisdiction on federal courts in trade-mark cases has been pronounced unconstitutional. Smail v. Sanders (1889) 20 N. E. 296, 118 Ind. 105. 2. Construction of act in general.The Trade-Mark Act of 1905 did not create trade-marks, but merely provided for their registration. In re Standard Underground Cable Co. (1906) 27 App. D. C. 320; In re Anti-Cori-Zine Chemical Co. (1909) 34 App. D. C. 191; Quaker City Flour Mills Co. v. Quaker Oats Co. (1915) 43 App. D. C. 200. The registration of trade-marks is regulated entirely by statute, and creates no property rights which forbid either regulation or abolition by Congress. Stamatopoulos V. Stephano Bros. (1914) 41 App. D. C. 590. The Trade-Mark Act creates no rights in a registered trade-mark, but merely provides evidence of the ownership of the right. Given v. New York Athletic Club (1914) 42 App. D. C. 558. The validity of a trade-mark depends upon general principles and rules of law, and is not affected by its registration under this section. Planten v. Gedney (D. C. 1915) 221 Fed. 281, decree reversed (1915) 224 Fed. 382, 140 C. C. A. 68. 3. What constitutes trade-mark.See notes under § 9490, post. 4. Persons who may acquire trademark in general.-Defendants' assignor invented a game to which he applied the name "Flinch," and, on the failure of one of the firms owning the business, its assets, including its trade-mark, were sold to complainant under a judicial sale. The original inventor, however, continued to manufacture and sell the game; and thereafter he transferred all his rights and ownership, including the trade-mark in the name of "Flinch," to defendants. Held, that complainant and its assignors, by simply making and selling the game, could not acquire a trade-mark in the name as against defendants. H. B. Chaffee Mfg. Co. v. Selchow (1905) 135 Fed. 1021, 68 C. C. A. 668, affirming judgment (C. C. 1904) 131 Fed. 543. The right of exclusively using the word "Durham" in labels on smoking tobacco belongs to manufacturers in the town of Durham, N. C. Blackwell v. Dibrell (C. C. 1878) Fed. Cas. No. 1,475. The trade-mark law gives no right by registration to any but owners of trademarks. Brower v. Boulton (C. C. 1892) 53 Fed. 389. One having the exclusive right to sell in the United States a patented article made in a foreign country may adopt a trade-mark for such article, not used by the manufacturer, and is entitled to protection in its use in this country after the expiration of the patent, even as against the patentee. Hughes v. Alfred H. Smith Co. (D. C. 1913) 205 Fed. 302, decree affirmed (1913) 209 Fed. 37, 126 C. C. A. 179. An official inspector of fish cannot claim property in his official brand as his private trade-mark. Chase v. Mayo (1876) 121 Mass. 343. A jobber, buying his goods from one manufacturing them solely for him, according to his directions as to design, material, workmanship, etc., may create a valid trade-mark on the goods. Nelson v. J. H. Winchell & Co. (1909) 89 N. E. 180, 203 Mass. 75. The right to describe an article by the trade-mark or patented name passes to him who purchases the article from the inventor or his assignee while the patent is in force, and to the general public after the patent has expired, on the ground of the assumed dediEdison v. Millscation of the name. Edisonia (N. J. Ch. 1908) 70 A. 191. Where Elias Howe, Jr., gave a license to use his patented right or combination in the manufacture of sewing machines, plaintiff was entitled to adopt and appropriate the word "Howe" as a trade-mark for sewing machines made by him, as against the patentee. Howe v. Howe Mach. Co. (N. Y. 1867) 50 Barb. 236. Any person or corporation capable of holding title to personalty may acquire Western the right to a trade-mark. Grocer Co. v. Caffarelli Bros. (Tex. Civ. App. 1908) 108 S. W. 413. 5. Aliens. The provision in the treaty with Germany, that citizens of Germany shall enjoy in the United States "the same protection as native citizens," in matters of trade-marks, etc., does not prevent a citizen of Germany from acquiring by prior use in this country a trade-mark in a particular word, although, by the laws of Germany, words alone are not the subject of appropriation. J. & P. Baltz Brewing Co. v. Kaiserbrauerei, Beck & Co. (1896) 74 Fed. 222, 20 C. C. A. 402, affirming decree Kaiserbrauerei, Beck & Co. v. J. & P. Baltz Brewing Co. (C. C. 1895) 71 Fed. 695. The fact that one is an alien does not affect his right of property in a trademark. La Croix v. May (C. C. 1883) 15 Fed. 236. A foreigner can acquire the right to a common-law trade-mark in the United States only by its use on goods sold in this country. Walter Baker & Co. v. Delapenha (C. C. 1908) 160 Fed. 746. 6. Residents of the Philippines, Porto Rico, and Cuba.-The Philippine Islands not being organized territories of the United States as contemplated by section 3522, supra, the residents of those islands were not entitled to the privileges of the Trade-Mark Law of 1881, but are entitled to such privileges under this section. (1902) 23 Op. Atty. Gen. 634; (1904) 25 Op. Atty. Gen. 179; (1909) 27 Op. Atty. Gen. 623. Porto Rico being an organized Territory of the United States, and the laws of the United States not locally inapplicable having been extended to that island, its residents are entitled to register trade-marks in the United States. (1902) 23 Op. Atty. Gen. 634. Since the law in force in Cuba gives to citizens of the United States similar privileges to those given by our trademark law. Cuba is one of the countries with which we have reciprocal arrangements, and a person located there is entitled to register trade-marks under our law. Id. 7. Corporations and manufacturing companies.-A trade-mark may be appropriated by a manufacturing company as well as an individual, and pass with the property to their successors. Atlantic Milling Co. v. Robinson (C. C. 1884) 20 Fed. 217. Where S. & Co. are to furnish the machinery and materials, and R. is to supply the supervising labor and skill, and a trade-mark which he is to defend, S. & Co. selling the ware, and receiving payment therefor, the profits to be divided, R. is a "manufacturer," within the meaning of the law of trade-marks. William Rogers Mfg. Co. v. Simpson (1887) 54 Conn. 527, 9 Atl. 395. An insurance company, though not engaged in the manufacture of articles of commerce, is nevertheless entitled to protection in its use of a trademark. Atlas Assur. Co. v. Atlas Ins. Co. (Iowa, 1907) 112 N. W. 232, judgment modified (1908) 114 N. W. 609. A corporation, a partnership, or individual may adopt a trade-name under which business can be transacted, actions prosecuted, and the title to property acquired and transmitted. Crompton v. Williams (1913) 103 N. E. 298, 216 Mass. 184. A corporation lawfully using machines, the invention of an individual, has implied authority to use the name of the inventor for the purpose of truly and properly describing the machines. Edison v. Mills-Edisonia (N. J. Ch. 1908) 70 A. 191. A corporation cannot acquire the name of one of its incorporators, and use it to deceive the public and to defraud others who have built up a business under the same name, on the ground that such is the true name of the incorporator. De Long v. De Long Hook & Eye Co. (1895) 89 Hun, 399, 35 N. Y. Supp. 509, affirming (1894) 10 Misc. Rep. 577, 32 N. Y. Supp. 203. 8. Unincorporated associations of workmen.-A number of workmen engaged in the same branch of industry, for mutual profit in the pursuit of their common vocation, may acquire a trade-mark to distinguish their workmanship from that of other persons. Schmalz v. Wooley (1898) 41 A. 939, 57 N. J. Eq. 303, 43 L. R. A. 86, 73 Am. St. Rep. 637, reversing decree (1898) 39 Atl. 539, 56 N. J. Eq. 649. An unincorporated association of operatives employed by others in manufacturing a product may adopt a device for designating the articles manufactured by themselves, and are entitled to protection against fraudulent imitations. Strasser v. Moonelis (1888) 55 N. Y. Super. Ct. (23 Jones & S.) 197. Where a union of employés adopted and registered a label to designate the product of the labor of the members thereof, it adopted it for the members of its various subordinate councils, within Labor Law N. Y. (Laws 1897, p. 466). Lynch v. John Single Paper Co. (1906) 101 N. Y. Supp. 824, 115 App. Div. 911. The Cigar Makers' International Union of America, a voluntary, unincorporated association of workmen, organized "for promoting the mental, moral, and physical welfare of its members," but not engaged in the business of making or selling cigars, etc., is not a trader, and is not entitled to a trade-mark, either at common law, or under the provisions of this section. McVey v. Brendel (1891) 144 Pa. 235, 22 Atl. 912, 29 Wkly. Notes Cas. 1, 27 Am. St. Rep. 625, 13 L. R. A. 377. 9. Number of trade-marks.-A person is not necessarily limited to one trade-mark even on the same article. United Lace & Braid Mfg. Co. v. Barthels Mfg. Co. (D. C. 1915) 221 Fed. 456. A manufacturer may be protected in the use of as many separate trademarks as he first adopts and continuously uses, so that they clearly become to purchasers distinguishing marks of the goods he makes or sells. Layton Pure Food Co. v. Church & Dwight Co. (1910) 182 Fed. 24, 104 C. C. A. 464. A manufacturer of a class of goods of different grades may use different trade-names, each of which indicates origin and ownership, and at the same time a particular grade of his goods. Dixie Cotton Felt Mattress Co. v. Stearns & Foster Co. (1911) 185 Fed. 431, 107 C. C. A. 501. A trade-mark for horseshoe nails is not invalid because the owner does not use it on all grades made by him, but he may have different trade-marks for different grades where the primary purpose of each is to indicate origin and not quality. Capewell Horse Nail Co. v. Mooney (C. C. 1909) 167 Fed. 575, decree affirmed (1909) 172 Fed. 826, 97 C. C. A. 248. A manufacturer of horseshoe nails which are put up and sold in packages and boxes and also sold and used loosely may adopt and use at least two trade-marks for the same grade of nails, one to be imprinted on the nail and the other on the packages and boxes containing them, even though such manufacturer has other trade-marks to indicate the same origin, but which incidentally indicate grade, and which he uses on other grades. Id. Where complainant adopted two trade-marks which it used separately in its advertisements, the fact that both were jointly used on the wrapper of its manufactured article did not enable a competitor to use one of them alone. Enoch Morgan's Sons Co. v. Ward (1907) 152 Fed. 690, 81 C. C. A. 616, 12 L. R. A. (N. S.) 729. That a manufacturer of cheese has a trade-mark used on all its products does not destroy its right to the exclusive use of a certain trade-name as applied to its cream cheese. International Cheese Co. v. Phenix Cheese Co. (1907) 103 N. Y. Supp. 362, 118 App. Div. 499. An application for registration of a trade-mark, which used the following terms: "For Typographical Union Label: (Fac simile attached). For Allied Printing Trades Council Label: (Fac simile attached)"-there being nothing in the law prohibiting registration of more than one label by one application, showed an intention to register both labels. State v. Montgomery (1910) 106 P. 771, 56 Wash. 443. 10. Origin and adoption of mark or name. See notes under § 9490, post. II. Extent of rights acquired.-While the right to manufacture a patented article, and sell it under the old name is free to the world since the expiration of the patent, the new manufacturer must clearly identify his goods, and not engage in unfair competition, nor do anything which will tend to induce the public to purchase his goods under the belief that they are those it has been accustomed to purchase under the same name. Centaur Co. v. Neathery (1898) 91 Fed. 891, 34 C. C. A. 118. In a suit for infringement of a trademark, objection to the validity of complainant's registration of the mark was not material where complainant had a common-law trade-mark in the device alleged to have been infringed. Capewell Horse Nail Co. v. Mooney (1909) 172 Fed. 826, 97 C. C. A. 248, affirming decree (C. C. 1909) 167 Fed. 575. It is the right of the owner and not the infringer of a trade-mark to select and adopt it, and that he uses with it other words which he does not adopt as part of that trade-mark does not deprive him of the right to it. Layton Pure Food Co. v. Church & Dwight |