consisted in striking out, in the first clause, after the words "has the right to," the words "such use," and inserting instead thereof the words "use such trademark in the United States," making the section read as set forth here.

Notes of

Priority of use.-Priority of use in general, see notes under § 9490, post.

Under this section, which requires proof of use of a trade-mark, the use of a label prior to its registration as a trade-mark does not constitute a publication which invalidates the trademark. G. Heileman Brewing Co. v. Independent Brewing Co. (1911) 191 Fed. 489, 112 C. C. A. 133.

Declaration.-Sufficiency of evidence of the filing of the declaration under oath as to the right to a trade-mark, under Act July 8, 1870, § 77. Smith v. Reynolds (C. C. 1872) Fed. Cas. No. 13,097.

Manufacturers of chewing gum filed their declaration as follows: "Our trade-mark consists in the arbitrary word 'Sappota.' This has generally been arranged * * in ornamental block letters, printed in pink, gradually increasing in depth of color from the letter 'S' to the letter 'A,' on an inclined line, and in connection with the word "Tolu.' Above the right-hand part of the words 'Sappota Tolu' is the word 'Adams,' and below the left-hand part are the words 'Chewing Gum;' but other forms of type may be employed, or it may be differently arranged or colored, or the words "Tolu,' 'Adams,' and 'Chewing Gum' may be omitted or changed at pleasure, without

Decisions

materially altering the character of our trade-mark, the essential feature of which is the word 'Sappota.'' Held, that the trade-mark was confined to the name adopted, with the form and color of the letters used in the printed label on the inside of the lid of the paper box, and that it could not be broadened so as to cover the whole box, with all its ornaments and forms of putting up the gum, and the colors used in such decorations. Adams v. Heisel (C. C. 1887) 31 Fed. 279, appeal dismissed (1890) 11 Sup. Ct. 1014, 140 U. S. 667, 35 L. Ed. 594.

Affidavits in support of an application for registration of a word, which only state what impression the word makes on affiants' minds, are not convincing even if relevant. In re National Phonograph Co. (1907) 29 App. D. C. 142.

Mandamus to compel registration.Under the provisions of this section as formerly enacted, mandamus will not lie to compel the commissioner of patents to register, as a trade-mark, the words "Ever Ready," after registration has been refused by him on the ground that the words were descriptive merely of the qualities or characteristics of the articles manufactured. U. S. v. Duell (1901) 17 App. D. C. 471.

§ 9488. (Act Feb. 20, 1905, c. 592, § 3.) Designation by foreign applicant of person on whom process or notice of proceedings may be served.

Every applicant for registration of a trade-mark, or for renewal of registration of a trade-mark, 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 trade-mark 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. (33 Stat. 725.)

See notes to section 1 of this act, ante, § 9485. § 9489. (Act Feb. 20, 1905, c. 592, § 4.) Effect to be given to application where previous application has been filed in foreign country affording similar privileges to citizens of the United States; limitations, and restrictions on issue of certificates in such cases.

An application for registration of a trade-mark 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 registra

tion of the same trade-mark shall be accorded the same force and effect às 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. (33 Stat. 725.)

See notes to section 1 of this act, ante, § 9485.

The certificate of registration of a trade-mark previously registered in a foreign country ceases to be in force when the trade-mark ceases to be protected in such foreign country, by a provision of section 12 of this act, post, § 9497.

Notes of Decisions

Treaties and international conventions.-Under article 6 of the convention of March 20, 1883 (25 Stat. 1376), for the protection of industrial property, providing that every trade-mark regularly deposited in the country of origin shall be admitted to deposit and so protected in all other countries of the Union thereby constituted, the owner of a trade-mark registered in France was entitled to protection in this country, whether or not such mark would have been allowed under the laws of this country. Rossmann v. Garnier (1914) 211 Fed. 401, 128 C. C. A. 73. Failure to file application in time.The word "Vichy," used in connection with mineral waters, and derived from

the locality in France where the waters are obtained, is a trade-name, within the meaning of the industrial property treaty with France of 1883, and as such is entitled to protection in the United States, though it has not been deposited as required by the treaty in the case of trade-marks. La Republique Francaise v. Schultz (C. C. 1893) 57 Fed. 37.

The failure of a foreign applicant for a trade-mark to file his application in the United States within four months after the application in the country in which he is located, merely deprives him of the benefit of the date of the foreign application. Deitsch Bros. v. Loonen (1912) 39 App. D. C. 114.

§ 9490. (Act Feb. 20, 1905, c. 592, § 5, as amended, Act March 2, 1907, c. 2573, § 1, Act Feb. 18, 1911, c. 113, and Act Jan. 8, 1913, c. 7.) Trade-marks which may be registered.

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 trade-mark 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, or of any design or picture that has been or may hereafter be adopted by any fraternal society as its emblem, or of any name, distinguishing mark, character, emblem, colors, flag, or banner adopted by any institution, organization, club, or society which was incorporated in any State in the United States prior to the date of the adoption and use by the applicant: Provided, That said name, distinguishing mark, character, emblem, colors, flag, or banner was adopted and publicly used by said institution, organization, club, or society prior to the date of adoption and use by the applicant: Provided, That trade-marks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark 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 trade-mark except by the consent of such individual, evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, 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 trade-mark of the applicant, or his predecessors from whom he derived title, for ten years next preceding February twentieth, nineteen hundred and five: 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. (33 Stat. 725. 34 Stat. 1251. 36 Stat. 918. 37 Stat. 649.)

See notes to section 1 of this act, ante, § 9485.

This section, as originally enacted, was as follows:

"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 trade-mark 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 trade-marks which are identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark 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 trade-mark, except by the consent of such individual, evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, 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 trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this Act."

It was amended by Act March 2, 1907, c. 2573, § 1, cited above, to read as follows:

"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, or of any design or picture that has been or may hereafter be adopted by any fraternal society as its emblem: Provided, That trade-marks which are identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark 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 trade-mark, except by the consent of such individual, evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, 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 trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this Act."

It was further amended by Act Feb. 18, 1911, c. 113, also cited above, to read as follows:

"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 trade-mark 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 or of any design or picture that has been or may hereafter be adopted by any fraternal society as its emblem: Provided, That trade-marks which are identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark 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 trade-mark, except by the consent of such individual, evidenced by an instrument in writing: And provided further, That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, 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 trade-mark of the applicant or his predecessors from whom he derived title, for ten years next preceding February twentieth, nineteen hundred and five: 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 was again amended by Act Jan. 8, 1913, c. 7, last cited above, to read as set forth here.

No action or suit is to be maintained under this act in any case when the trade-mark is used in unlawful business, or when any article is injurious in itself, or when the mark has been used with the design of deceiving the public in the purchase of merchandise, or upon any certificate of registration fraudulently obtained, by section 21 of this act, post, § 9506.