It provides that except under certain conditions nothing shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods and commerce.

The mark must have become distinctive, and the Commissioner may accept and it says may accept and not "shall accept" but may accept, and he has a wide latitude, may accept as prima facie evidence that the mark has become distinctive as applied to the applicant's goods in commerce, and only to those goods, through substantial, extensive and continuous use thereof as a mark by the applicant in commerce for the 5 years next preceding the date of filing of the application for its registration.

Before the applicant gets into that position and during those preceding 5 years, anyone deeming himself injured can attack the registration which up to that point when it acquired incontestability by the machinery which I have just described, was a mark that anyone could take a pot-shot at.

He could apply for registration, or oppose it in the application, or apply for the cancelation after it had been registered, and only after the mark had been undisturbed for five years as to use and 5 years as to registration only then upon a valid, substantial showing of acquisition of a secondary mark, when the mark had attained the special status which gives it the protection of subdivision 4, on which Mr. Rogers submitted an amendment

Mr. LANHAM. Is not this whole question analogous to our general statutes of limitations and certainly should at some time become incontestable?

Mr. Mock. I just want to say about two words on this point:

In the United States, largely due to the pressure of the advertising agencies, the new marks are largely descriptive in whole or in part. Every patent lawyer and trade-mark lawyer has to contest the fact that his client always wants to register a descriptive mark, rather than a technical mark. I venture to say that at least a third of the trade-marks which are registered in the United States Patent Office would be refused registration in England, on the ground that they are descriptive.

I just want to take a simple illustration. We all know the vogue for vitamins. Somebody comes along and he registered Vitaminol, and he just adds an "O-L-" to the word "vitamin."

And if the examiner should mildly suggest that word is descriptive, why the applicant says, "Oh, no, I don't want the word 'vitamin." I only want the word 'vitaminol'" and so it is allowed, and it is allowed registration, but it becomes a horse of another color after 5 years, because then the mark is incontestable and the man says, the owner of that mark says you can't use Vitaminas, or Vitamines, or anything else, I own every mark which has the word "vitamin" in it except I consent to let you use the word "vitamin" alone.

Now, he has gotten a monopoly by stretching the mark and he can oppose, and probably successfully, any other mark which has the word "vitamin" in it.

It is exactly analogous to the condition in patents. The man comes to the Patent Office with a weak claim and the examiner says "No; we can't allow you that," but the applicant says, "We only want this little bit of a patent to cover our exact structure," but

after he gets his patent, then he goes out into the world and he says, "Why, we cover everything, we want the doctrine of equivalence construed in our favor."

So I say, as long as you have a large number of trade-marks constantly being allowed, which are not merely descriptive, they can be very well used to get a monopoly, to which the applicant is not entitled.

Mr. LANHAM. Is it not quite clear in the case of the kind that you cited that within 5 years somebody would go in and contest that?

For instance, I can own a piece of land, a squatter can go on that land, and he has got no right in the world to it but that he goes and squats on it for a certain time and he can take my land away from

me.

Mr. Mock. God still fights on the side of the heaviest battalions, and very often the owner of these descriptive or semidescriptive marks by harassing and opposing every analogous mark, is able to keep off the register similar marks.

Furthermore, if the person you would speak of, he is using the mark without any confusion with respect to the other mark, and he has heard no complaints from the registrant for 5 years, during those 5 years there is no reason why he should realize that it was necessary for him to go in and oppose it.

It is true if he is wide awake and a wealthy corporation and has a lot of attorneys, his attorneys may look up the Official Gazette. and see just what registrations come out, but if he is a small fellow he just will not know the difference until the mark becomes incontestable.

Mr. LANHAM. If I did not know a man was squatting on the land out in Texas they would take it away from me, if I did not exercise a little diligence to see how that land was being looked after, and see whether someone was squatting on it.

It seems to me that we get pretty far afield on some of those things; people that have valuable rights in trade-marks certainly would be diligent enough to look to the protection of their mark, and I think it would be a reflection upon you eminent gentlemen who represent them to contend for a moment that they did not do it if their mark is worth anything.

Mr. MEAD. The mark "zipper" was originated by B. F. Goodrich & Co. and not long ago, their chief counsel told me they did not protect "zipper" when it was young and they have lost it.

Mr. PLAUCHÉ. I am trying to follow this argument, Mr. Martin, and may I ask you a question as to the common usage of a word that might have been coined?

For instance, let me use this example: I don't know the status of it. I think the Frigidaire is a General Motors product.

Now, in my particular section of the country, frigidaire indicates mechanical refrigeration.

Now, would it be possible, because it becomes used generally as describing an ice box, electric ice box, would that be constructive abandonment of that trade-mark?

Mr. MARTIN. If it was due to an omission, failure to act on the part of the owner of the mark.

Mr. PLAUCHÉ. How could the act, if that name just became of common usage, and the people, they did not urge it and they did not accept in advertising a box with "Frigidaire" written on it.

Mr. MARTIN. I should think in a case like this, where an owner of a mark commences to realize that his mark is getting away from him, he has some burden to do some advertising to prevent that.

For example, in a case like you say, which are assumed facts, we will assume, because I am sure that General Electric would not like to concede these facts, but assuming such facts as that, and there are a number of marks that are in that fix, in my opinion the owner of the mark has the obligation to do certain advertising to overcome that; for example, if he in his advertising, he said, "When you use the word"-citing the trade-mark-"you mean a product put out by us. Do not use the word to mean any kind of a product such as this, but only our product."

Mr. LANHAM. His right would not be jeopardized just by talk among people that a frigidaire means something; wouldn't someone have to use it in a way that would jeopardize the trade-mark as claiming a right in the mark?

Mr. MARTIN. If we assume that the mark had lost its significance as indicating origin, if it had gone that far, and it was due to a failure of the owner to take some action to stop it, why then under this provision here he would lose his trade-mark.

Now, there are cases which, despite what the professor has said, I think that I will be able to show the professor what I mean, I think that it is a misunderstanding of the word "intent," if a person fails to take an action he can be construed to intend to lose his mark, and even though he openly says, "I want to keep this mark," if his acts speak louder than his words, he really intended to lose his mark and that is the argument which the professor and I have and which we will try to straighten out among ourselves.

Mr. ROGERS. There is an old case decided by Justice Brandeis, about celluloid.

The word "celluloid" was claimed as a trade-mark and he held that it was a trade-mark and the defense was that it had gotten into the language and what are you going to do about it.

He said that the public can make use of a trade-mark as a common appellant, in conversation, and the only limitation being that a rival manufacturer cannot put it on his goods.

Mr. LANHAM. That was my understanding.

Mr. ROGERS. That is exactly the law as I understand it.

Now, to get back to a famous illustration, Kodak, arbitrary word as it was, was in a fair way of getting off the reservation, people were talking about any kind of a hand camera as a Kodak, and you remember the slogan that Eastman used, "If it isn't an Eastman, it isn't a Kodak," and they plastered the country over with that, and so the public got minded to realize that a Kodak camera was an Eastman, and if it wasn't an Eastman it wasn't a Kodak, and they revived that, that had a fair way of getting into the language, and that is what Mr. Martin means.

There was an act of omission, which if not rectified might mean loss of the mark, but Eastman took affirmative steps to get it back again and succeeded.

Mr. HANDLER. Mr. Chairman, I do not want to take any more time on this but Congressman Klein asked whether I had any suggestion to make to clarify this section.

Well, my first suggestion would be that subdivision 4 be omitted but if that is not possible I should like to urge as an alternative, the insertion of another subdivision, after the present subdivision 3, "that the mark is or has become generic."

Now, if Mr. Martin says that the term which has become generic may be used, notwithstanding the incontestable provisions, that would make it perfectly clear that that is the meaning of this provision. Mr. LANHAM. Now, gentlemen, it is 5 o'clock, and I have a committee meeting tonight, and we will meet again in the morning at 10 o'clock. I don't know how far we can go but if we do not get through in the morning then we will get through on Friday.

Mr. ROGERS. There are only two or three paragraphs that I know of, that there is any dissent about, as far as the American Bar proposal is concerned, and I think that there is very general acquiescence of the bill in the form of H. R. 5461, and if we could confine ourselves to those things, I think the rest of the changes are merely verbal.

Mr. LANHAM. Let us see if we can do that.

(Whereupon at 5 p. m., an adjournment was taken until 10 o'clock tomorrow, Thursday, November 13, 1941.)

TRADE-MARKS

THURSDAY, NOVEMBER 13, 1941

HOUSE OF REPRESENTATIVES,

SUBCOMMITTEE OF THE COMMITTEE ON PATENTS,

Washington, D. C.

The committee met at 10 a. m., Hon. Fritz G. Lanham presiding. Mr. LANHAM. The committee will please be in order.

Mr. Rogers, who wishes to get away today on account of other engagements, desires to be heard with reference to one or two suggestions that he has to make concerning the committee print and the recommendations made by the American Bar Association. Rogers.

Mr.

Mr. ROGERS. Mr. Chairman, I suppose I might as well indicate on the record whom I represent. I am here under the authority of the National Advisory Council to the House Committee on Patents. I have a letter asking me to attend and represent that group. I am also speaking for the New York Patent Law Association and the Merchants Association of New York. As far as the New York Patent Law Association and the Merchants Association are concerned they authorize me to state that they are in favor of the Lanham bill, H. R. 5461. They have had a referendum on it and have carefully considered it and are for it.

Mr. LANAHAM. Have they considered also the recommendations of the American Bar Association as incorporated in the committee print? Mr. ROGERS. They have not; no. The only suggestions I care to make with respect to the American Bar Association's suggestions, I think most of them are admirable and should be incorporated, but the only other suggestion where I would like to perhaps differ mildly from their recommendations, one of them is in respect to

section 32.

Mr. LANHAM. That is on what page?

Mr. ROGERS. Unfortunately I have checked this with this.

Mr. LANHAM. Relating to remedies?

Mr. ROGERS. Relating to remedies.

Mr. LANHAM. That is on page 28 of the committee print?

Mr. ROGERS. That is on page 26 of H. R. 5461.

Mr. LANHAM. Proceed, Mr. Rogers.

Mr. ROGERS. I will read the Bar Association recommendation.

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