mark being owned even tough it was not registered and that is why the word "owner" was used.

Mr. FENNING. Why not say "owner or registrant," page 44, line 24. Mr. MARTIN. All right, there is no objection to that.

Mr. LANHAM. On page 44, line 24, "owner or registrant."

Mr. MARTIN. That is fine.

Mr. POHL. Mr. Chairman, may I call attention to the first line of the first section, page 1, line 4?

The owner of a trade-mark used in commerce may register his trademark

* *

The whole act is for owners of trade-marks only.

Mr. LANHAM. But this is referring over here only to the collective character of the marks, and I think that it would be a specific reference that would concern only this particular provision.

Mr. KLEIN. I would like to ask Mr. Martin, I have not got this cleared up in my own mind.

The gentleman from the National Association made a statement a few moments ago, about the fact that they did not have a copy of this committee report or even have the Bar Association recommendations. Mr. STANLEY. Yes; I had that.

Mr. KLEIN. Did all of the associations which are represented here have copies of either the reprint or of the material that is in it before you came here today?

Mr. MARTIN. I am quite sure that they did and Mr. Stanley said that he did. He did not have the reprint in this form but what he had was the amendments of the American Bar Association.

Mr. KLEIN. That is what I meant; everybody has seen that? Mr. LANHAM. May I inquire of Mr. Stanley, if this suggested revision would take care of the objections that he urged?

Mr. STANLEY. I still think that for clarity's sake that I agree with the chairman in that regard, to leave the old language, collective certification, and association marks and also leave the definitions, which are not very concise, it is true, and which will perhaps need some legalistic definition now and again but I think in the interest of keeping in line with State legislation we should have it in the Federal legislation too.

Mr. LANHAM. Gentlemen, suppose that we take a 5 minute recess. (Recess.)

Mr. KLEIN. Professor Handler tells me that he may have something to add to that.

Mr. LANHAM. I understood that you gentlemen had probably come to some sort of mutual agreement as to the phraseology.

Mr. ROGERS. We have.

Mr. LANHAM. In the committee print, that is section 34, page 30, we will revert to that for a moment.

That is subdivision 4 of section 34 on page 30, lines 11 to 19. Now, what is the suggestion? Mr. Rogers, do you have that? Mr. ROGERS. I have a draft that was agreed upon this noon and perhaps if I read it:

That the use by the defendant of the name, term, or device charged to be an infringement is a use otherwise than as a trade or service mark, defendant's individual name in his own business, or of the individual name of anyone in

privity with the defendant or of a term or device which is descriptive of and used fairly and in good faith, only to describe to users the goods or services of the defendant, or their geographic origin.

Mr. LANHAM. Is that a matter of general agreement among those who discussed that in the noon conference?

Mr. Handler, will you kindly give your name to the reporter?

Mr. HANDLER. My name is Prof. Milton Handler, I am an associate professor of law, Columbia University, and I am the trade-mark counsel for the Pepsi Cola Co:

I am somewhat puzzled about the meaning of subdivision 4 and such comments as I should care to make would necessarily depend upon whether the reading that I have given the section is the correct one, so with the permission of the chair I should like to ask two questions as to what is intended to be covered by subdivision 4.

The first question is whether the subdivision is designed to overturn the settled doctrine of the courts as typified by the recent decision of the Supreme Court in the Shredded Wheat case.

Suppose under this provision of the statute the mark "Shredded Wheat" had been on the register for 5 years, and had through popular usage lost its distinctiveness as a mark, and had become the product name, or the recognized generic name of the article shredded wheat; does this provision mean that no manufacturer of shredded wheat could call his product shredded wheat, and accompany the name shredded wheat with his personal name, such as the Kellogg people did or with his business name, as others in the cereal field. might want to do?

Mr. LANHAN. I might say that we had quite a discussion of that this morning and there were some differences of opinion as to what the phraseology should be of that section 4. The amendment which Mr. Rogers has just read is the amendment that was agreed upon at this conference so that Mr. Rogers, in view of the fact that he has read the amendment, I haven't it before me, can answer your question. Mr. HANDLER. I have heard the amendment. I am wondering what the meaning intended is?

Mr. MARTIN. May I endeavor to answer Professor Handler's question?

I do not think the answer is contained in subsection 4. I think the answer to Professor Handler's question is contained in subsection 2, which is immediately above, which provides the defense that the mark has been abandoned by the registrant.

Now, the definition of an abandonment is provided for on page 45, and among the definitions given for an abandonment is the one which is, when any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of origin; so it seems clear to me that the defense which would cover the Shredded Wheat case given by Professor Handler is covered by subsection 2 and not subsection 4. Mr. HANDLER. In other words, it is the opinion of Mr. Martin that the Shredded Wheat case on its facts would be decided the same way, under this statute.

Mr. MARTIN. As I remember the facts, I will answer that, yes. Mr. HANDLER. And I take it that the Aspirin case would be decided the same way.

Mr. MARTIN. That is right.

Mr. HANDLER. And the Cellophane case the same way?
Mr. MARTIN. Yes.

Mr. LANHAM. They were all mentioned in the discussion this morning.

Mr. HANDLER. Now, Mr. Chairman, I am not at all clear in my own reading of the section that if that be the legislative intent, that such intent would be effectuated by the wording of this draft, because in the cases that I have mentioned, with which all of you are familiar, the Court made it perfectly clear that rights in a term might be lost by reason of the public use of that term, as the name of the product, despite the fact that there was no intention whatever on the part of the user of the mark to abandon any of his rights, indeed, notwithstanding that he did everything in his power to prevent such abandonment. It does not appear to me that reliance upon the definition of abandonment would take care of what is the manifest intention of the draftsman as explained by Mr. Martin, to leave the rule of the Shredded Wheat, the Aspirin, the Cellophane cases undisturbed. It seems to me that further revision of subdivision 4 of this section is necessary to make clear that the public can enjoy the right granted by these decisions to use terms which have become publici juris, notwithstanding the fact that they might have been trade-marks and registered as such.

Mr. LANHAM. Have you read the amendment as proposed by Mr. Rogers?

Mr. HANDLER. I listened to it very attentively and it seems to me the amendment as proposed by Mr. Rogers increases the ambiguity on this point rather than lightens it.

Mr. ROGERS. What Mr. Handler has in mind is undoubtedly a remark by Judge Hand, in the Cellophane case, to the effect that if a mark is a good trade-mark, the public grabs it, even though the owner of the mark has taken every precaution to prevent it getting into the public domain, his right nevertheless is gone.

That view, I believe, is entertained only in the second circuit, and the gentlemen who revised the American Law Institute Book of Torts have adopted it with some ramifications.

It is a moot question whether that rule should prevail or whether a man's property can be taken away from him without his consent.

It seems to us that it was sufficiently taken care of in the definition of abandonment, where either by acts of omission, the mark has got into the public domain, then it may be considered abandoned, and I believe that those cases would have been decided or would be decided, as they were decided, if this statute were on the books.

Whether or not that particular remark of Judge Hand will get into the body of the law is something that is going to happen in the future,

and I don't know.

Mr. LANHAM. It was obiter in that case?

Mr. ROGERS. Yes.

Mr. HANDLER. I hope that I am not burdening the committee with discussion of this point but I think it is a matter of great public importance.

The definition of abandonment speaks of the acts of omission or commission of the registrant.

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Now, that is only a part of the story. Words become widespread in their usage, by reason of the action of the public more than by reason of the action of the registrant, and if the word has become the accepted term for describing the article, then under the law as it has been developed heretofore the term is available for use by all.

Now, the clearest illustration of that is a rule which is supported by countless authority. If during the life of a patent the patentee registers his trade-mark and that trade-mark becomes the generic designation of the article, the mark becomes publici juris upon the expiration of the patent, the test being, what does the word mean to the public? Does it mean source? And if it does, it is protected, and if it means the product, then it is available to everyone, as Mr. Justice Brandeis and Mr. Justice Holmes both, I think, very lucidly stated.

The user of the mark under those circumstances is not sharing in the good will of the patentee; he is sharing in the good will of the product, and it is of the essence of the competitive system that one may share in the good will of the product unless we are going to permit the law of trade-marks to be used as an instrument for creating monopolies.

Now, in the case of the expiration of a patent, there is no question of omission, or intention to abandon on the part of the patentee. That element clearly has no part in that doctrine.

Now, it would seem to me that unless subdivision 4 were clarified, and unless there be placed in subdivision 4 language not found in the definition of the section on abandonment, the claim would be made, in both types of cases that I have mentioned, that rights in the mark were incontestable notwithstanding the fact that the mark had become publici juris.

Now, there is another aspect of subdivision 4.

As I understand it, the purpose of the incontestable provisions is to remove from the realm of attack, marks which contain infirmities, and which otherwise might not be protected.

After all, if a mark is clearly valid in its registration, there is very little added to such valid mark by a provision of incontestability. The main purpose of the provision is to take care of the case where a mark has improperly gotten upon the register, and has been there for 5 years, and the attempt is made to preclude any attack either directly in the Patent Office, or indirectly, I presume, in litigation in the courts.

Now, we know that in the past, words have gotten on the register which should not be there, and we have no reason to presume that they will never get there again in the future.

Now, as I understand this provision, if my reading is correct, and I certainly want to be enlightened upon it, words of ordinary common usage, if they happen to get on the register, are then taken from all other traders, who are precluded from using that term.

Now, I do not know what the purpose of that may be; I can see very serious public consequences, because after all it would be extremely difficult today, would it not, if manufacturers of radios could not use the word "radio" because someone had happened to get that word on the register when radios first came into vogue, or if the word "automobile" had gotton on the register and had been there for a period of 5 years, or "aluminum," or "aspirin," "cellophane," or "shredded wheat"-those are all necessary words if there is to be competition.

Now, obviously, no one argues for depriving a trade-mark owner of effective protection against deceitful conduct on the part of defendants. He is entitled to be protected against deceit and confusion, but is he entitled to be protected against the use of the words where there is not any confusion?

That, I think, raises an issue of transcendent public importance, which ought not to be clouded by language which is ambiguous.

Now, my proposition, Mr. Chairman, is this, that if this measure places in jeopardy the right of American traders to use ordinary terms, merely because by accident or design those terms have gotten on the register and have been there for 5 years, the provision of the bill runs counter to the American principles of fair competition.

On the other hand, if it is not the intention to place in jeopardy the use of such terms, it seems to me that the subdivision requires very drastic clarification.

Mr. KLEIN. May I ask, Mr. Handler, have you prepared anything that you think might bring out your point, or what you think ought to be incorporated in the act?

Mr. HANDLER. I have not prepared anything other than to satisfy myself in my own mind that this subdivision should be omitted, and the section should be so revised as to make it clear that the established right of American traders to use the common words of their trade is not in anywise affected by this legislation. I hope that I am right in my understanding that it is the intention of the draftsmen of the measure not to place that established right in jeopardy by any language in his bill.

Mr. LANHAM. Well, we were endeavoring this morning, after rather voluminous discussion of this very provision, to get at some meeting of the minds.

There was a conference of gentlemen who were here in attendance on that subject, and the amendment read by Mr. Rogers was a result of that conference, and the purpose was to seek to obviate some of the various things to which you have referred.

Now, these gentlemen who have drawn it can tell you more, I think, with reference to its effect than any member of the committee could.

Mr. LOUIS ROBERTSON. I would like to point out, Mr. Chairman, that the new wording does not in the least correct the objection which I made just before lunch, that a person who uses a descriptive term as part of his trade-mark should have complete right to contest the question of secondary meaning of the registered trade-marks.

If he uses the term "So-Sweet as his trade-mark for candy, he should not be barred from the use of that term because somebody has happened to have gotten a registration for "Sweet" 5 years back, and if he uses the term "radio" which Mr. Handler suggested, he should not be barred from that term without any right to contest the question of whether it is truly a trade-mark having secondary meaning, and yet in each instance he would be using those terms as a trademark, and the wording which has been suggested may deprive him from any defense if he uses it as a trade-mark.

Mr. POHL. I will try to be as brief as I can.