that no one now knows with certainty what it means or what it will mean in the next case. Trade is more integrated now. The test under this revised bill for registration and of infringement is the test which has been long and consistently applied by the courts under the common law, that is, whether the mark in question causes confusion or mistake or deceives purchasers. This is the common law and should be the statute law relating to registrations. It will give much broader protection to valuable well-known marks and greater protection and confidence to both business and purchasers. 6. THE PENDING BILL GIVES EXCLUSIVE RIGHT TO USE THE MARK IN COMMERCE Under H. R. 5461, registrations on the principal register give exclusive rights to use the registered marks in commerce unless the registrations are canceled within 5 years or the use abandoned or they conflict with prior rights. The registrations of marks not used at the expiration of 5 years are to be canceled, thus restoring these marks to the public domain. 7. THE PROPOSED REVISION OF EXISTING LAW WILL ENCOURAGE MORE REGISTRATIONS AND CREATE A BETTER SEARCH FILE The greater privileges granted by registration under the pending bill will cause a much larger percentage of marks used to be registered, thus giving the business community, when new marks are required, a better and more adequate search file to learn of marks used by others. 8. H. R. 5461 PRESERVES THE GOOD FEATURES OF THE EXISTING TRADE MARK STÁTUTES This bill preserves the existing good features of the acts of 1905 and 1920, following as consistently as practicable the language thereof to retain the advantages of the constructions of these laws which have been placed upon them by the courts in the long years they have been in effect. On the other hand, the defects of these laws which have caused uncertainties, differences in court decisions, and variances between the registrations and the common law are largely eliminated to make more certain the provisions of the new law and have them conform to the present construction of the common law by a majority of the courts. H. R. 5461 preserves in an orderly fashion the good points of the existing laws and makes changes therein in the proper places. This will give us a complete and logically arranged new law conforming to the common law and to modern business conditions, but containing the desirable parts of the present statutes. 9. THIS PENDING BILL AFFORDS NEW PROTECTION FOR SERVICE AND CERTIFICATION MARKS Heretofore there has been no provision for the registration of marks used in the sale of services or for certification marks, both of which require the protection of the registrations which are provided therefor in this bill. The provisions for the registration of service marks give effective protection for marks, titles, character names and so forth, used in radio and other advertising, for which there is now no protection except the common law. 10. THE PROPOSED MEASURE ESTABLISHES NEW RIGHTS BUT PRESERVES PRIOR RIGHTS H. R. 5461 will make registrations conform with modern business practices and establish registrations which will in time represent actual rights to use the marks. The only penalty for nonregistration will be that users of unregistered marks which conflict with registered marks may not extend the areas of use of the unregistered marks beyond the territory in which the unregistered mark is used at the time of registration of the same mark, but the registrant cannot interfere with the continued use by the prior user of the unregistered mark in such area. Thus, the registrant is granted whatever rights are available and free, but no authority to deprive others of rights acquired by prior use. 11. THE PROPOSED LAW WOULD GRANT INCONTESTABLE RIGHTS OPERATING TO ESTOP ACQUISITION OF LATER CONFLICTING RIGHTS H. R. 5461 would eliminate future conflicts. Not even the owner of an incontestable registration can interfere with the continued exercise of the rights of the prior user. The incontestable right acquired by registration and continuous use for 5 years operates, so long as the mark continues in use, as an estoppel against the acquisition by others anywhere in the country of the right to use the same or similar marks in commerce, thus insuring to the registrant the security of his rights, but the publication of his application for registration gives 5 years' notice to everyone that such incontestable rights are to be acquired unless opposed or canceled. ORIGIN, PROGRESS, AND RESULT OF REVISION OF LANHAM BILL The bill was revised first after careful study in the autumn of 1940 by the subcommittee on trade-marks of the National Association of Manufacturers' committee on patents and research, whose revision of the bill was approved by the National Association of Manufacturers. This revision had further study with resulting modifications by the United States Trade-Mark Association Lanham bill committee at about 10 meetings just before December 1, 1940. The result of these two studies was then carefully considered by the lawyers advisory committee of the United States Trade-Mark Association during a series of about 12 meetings between December 4, 1940, and the end of February 1941. In the meantime, the American Bar Association committee on trade-marks had been studying the Lanham bill, and under date of January 18, 1941, submitted to the American Bar Association section of patent, trade-mark, and copyright law its proposed revision thereof. It too had considered the changes therein already proposed by the committees of the National Association of Manufacturers and the United States Trade-Mark Association. This American Bar Association committee's version was further revised at the American Bar Association's section meeting in Washington on February 6, 1941. The result was certified to the House of Delegates of the American Bar Association meeting in Chicago, March 18, 1941, where it was approved. On January 17, 1941, the National Association of Manufacturers, at the suggestion of the United States Trade-Mark Association, sponsored the formation of a coordination committee on trade-mark legislation, made up of representatives of organizations known to be actively interested, for the purpose of making one revision which all could support. The drafts of the bill by the lawyers' advisory committee and by the section of the American Bar Association were submitted to this coordination committee. The chairman of this coordination committee appointed a drafting committee representing the divergent views on the legislation. The first revision made by the drafting committee was submitted on March 31, 1941, to all members of all committees listed herein for their further suggestions which were received and considered by the drafting committee in making its final report of April 28, 1941. This revision was approved on April 28, 1941, by the lawyers' advisory committee and on May 5, 1941, by the Lanham bill committee, both of the United States Trade-Mark Association, as representing the net result of very thorough consideration of all views expressed by those who have given careful study to the subject, in the hope that provisions so carefully and painstakingly formulated will have the support of everyone concerned. COMMITTEES NATIONAL ASSOCIATION OF MANUFACTURERS COMMITTEE ON PATENTS AND RESEARCH Chairman: Robert L. Lund, executive vice president, Lambert Pharmacal Co., St. Louis, Mo. NATIONAL ASSOCIATION OF MANUFACTURERS SPECIAL PATENT ADVISER George E. Folk, 14 West Forty-ninth Street, New York. NATIONAL ASSOCIATION OF MANUFACTURERS SUBCOMMITTEE ON TRADE-MARKS Chairman: L. E. Lentz, vice president, Underwood-Elliott-Fisher Co., 1 Park Avenue, New York. W. H. Stanley, vice president, William Wrigley, Jr., Co., Wrigley Building, Chicago, Ill., 1941 chairman of subcommittee. H. M. McLarin, trade-mark counsel, Standard Oil Co. of New Jersey, 26 Broadway, New York. Henry J. Savage, legal department, National Biscuit Co., 449 West Fourteenth Street, New York. UNITED STATES TRADE-MARK ASSOCIATION LANHAM BILL COMMITTEE Chairman: Eberhard Faber, president of United States Trade-Mark Association and of Eberhard Faber Pencil Co., 200 Fifth Avenue, New York. Secretary: Dr. Walter J. Derenberg, secretary of United States Trade-Mark Association law committee, 522 Fifth Avenue, New York. Elliott Congleton, B. T. Babbitt Co., 386 Fourth Avenue, New York. H. B. Estrada, Compania Ron Bacardi, Empire State Building, New York. H. C. Little, American Cyanamid Co., 30 Rockefeller Plaza, New York. H. M. McLarin, Standard Oil Co. of New Jersey, 26 Broadway, New York. Arthur R. Wendell, the Wheatena Corporation, Wheatenaville, Rahway, N. J.; vice president United States Trade-Mark Association. W. M. Wilson, International Business Machines Co., 590 Madison Avenue, New York. UNITED STATES TRADE-MARK ASSOCIATION LAWYERS' ADVISORY COMMITTEE Chairman: Sylvester J. Liddy, 24 West Fortieth Street, New York. Victor D. Broman, Coca-Cola Co., Post Office Box 1734, Atlanta, Ga. Isaac W. Digges, 60 East Forty-second Street, New York. James S. Hoge, 41 East Forty-second Street, New York. Theodore S. Kenyon, 165 Broadway, New York. Ellis W. Leavenworth, 6 East Forty-fifth Street, New York. John C. Pemberton, 36 West Forty-fourth Street, New York. Edward S. Rogers, 122 South Michigan Avenue, Chicago, Ill. Stewart L. Whitman, 60 East Forty-second Street, New York. AMERICAN BAR ASSOCIATION COMMITTEE ON TRADE-MARK LEGISLATION Chairman: Wallace H. Martin, Nims & Verdi, 60 East Forty-second Street, New York. Otto H. Barnett, Barnett & Truman, 1518 Monadnock Block, Chicago, Ill. Thomas L. Mead, Jr., Browne & Phelps, Munsey Building, Washington, D. C. James M. Naylor, 2607 Russ Building, San Francisco, Calif. Paphne Robert, Coca-Cola Co., post-office box 1734, Atlanta, Ga. Henry J. Savage, National Biscuit Co., 449 West Fourteenth Street, New York. Edmund Dill Scotti, 230 Park Avenue, New York. Earl H. Thomson, Thomson & Thomson, 80 Federal Street, Boston, Mass. THE COORDINATION COMMITTEE Chairman: George E. Folk, National Association of Manufacturers, special patent adviser. Secretary: Dr. Walter J. Derenberg, United States Trade-Mark Association. Robert W. Byerly, of Byerly, Watson & Simonds, 225 Broadway, New York; vice chairman of New York Patent Law Association Trade-Mark Committee. Charles Cosby, secretary, Label Manufacturers National Association, and of New York Trade Association Executives, 60 East Forty-second Street, New York. Roscoe Edlund, manager, Association of American Soap & Glycerine Producers, Inc, and of National Manufacturing Trade Group of National Industrial Council, 381 Fourth Avenue, New York. Eberhard Faber, President of United States Trade-Mark Association, 522 Fifth Avenue, New York. S. J. Liddy of Munn, Anderson & Liddy, 24 West Fortieth Street, New York, chairman of Trade-Mark Committee of New York Bar Association, Wallace H. Martin of Nims & Verdi, chairman of Trade-Mark Committee of American Bar Association, 60 East Forty-second Street, New York. George S. McMillan, secretary, Association of National Advertisers, 330 West Forty-second Street, New York. Karl Pohl of Briesen & Schrenk, 49 Wall Street, New York, representing the late Mr. Van Briesen on behalf of the New York Merchants' Association TradeMark Committee. H. M. McLarin, Standard Oil Co. of New Jersey, 26 Broadway, New York, representing the National Association of Manufacturers Trade-Mark Subcommittee and the United States Trade-Mark Association Lanham Bill Committee. DRAFTING COMMITTEE Wallace H. Martin and H. M. McLarin with special assistance from Stewart L. Whitman, R. W. Byerly, Karl Pohl, Victor D. Broman, and Miss Daphne Robert, all of the foregoing committees. Mr. STANLEY. I have a few further remarks to make. We believe a statute of this kind should be clear and concise; that words or phrases with a double meaning or hidden interpretation should be avoided. Such a statute should be capable of being read and understood by any businessman of average intelligence. Mr. LANHAM. Are there, Mr. Stanley, any specific suggestions by way of amendment to these recommendations of the American Bar Association as incorporated in the committee print? Mr. STANLEY. Yes, sir; as to section 32. Mr. LANHAM. That is the one we were considering recently? Mr. STANLEY. Yes; we were a party to the complaint of the Folding Paper Box Association of America, and after hearing their complaint, came to the conclusion after our own revision that the provision was unduly harsh on the innocent contributory infringer. And our representative at the bar-association meeting at Indianapolis, we felt that section, although we had approved it, was uduly harsh on innocent contributory infringers. That is section 33 in the committee print. Mr. LANHAM. That is right on page 28. Mr. STANLEY. Twenty-eight of the reprint, section 33 in the committee print. Mr. LANHAM. That is in keeping with the discussion we had here a few moments ago? Mr. STANLEY. Precisely, sir. And Mr. Fox representing us in the national meeting of the American Bar Association in connection with Mr. Martin reframed section 32 and we, therefore, are in accord with section 32, 33 now in the committee print. Mr. LANHAM. In other words, section 33 of the committee print in your judgment meets with your approval? Mr. STANLEY. Yes; it meets with our approval. These were all taken up by the subcommittee; we have not had the whole committee report together. Section 29 we think should be stricken from the committee print, on page 24. Section 4 of the committee print on pages 6 and 7 we would like to see restored to the verbiage shown in H. R. 5461. We agree, however, to the amendment of the definitions shown on page 43 of H. R. 5461, page 44 of the committee print, provided the changes as agreed to yesterday on page 44 of the committee print, lines 22 to 25, are made. Mr. LANHAM. My recollection is there was no objection to that amendment yesterday. Mr. STANLEY. Section 33 (b) 4 of H. R. 5461 becomes section 34 (b) 4 of the committee print. Mr. LANHAM. Yes; that is the one we were discussing at some length and concerning which there was a conference and a proposed amendment in lieu of this language submitted. Mr. STANLEY. Yes, sir; we have agreed to changes submitted by Mr. Rogers and Mr. Byerly. We also agree to reframing section 15 as shown on the committee print on page 17. In our opinion it more logically and more clearly enunciates our own views. Mr. LANHAM. You agree to section 15? Mr. STANLEY. We agree to it as reframed in the committee print. Section 21 is a lawyer's phraseology. We businessmen do not like it. You refer to the procedure, relative procedure in sections 4915 and 4911 of the Patent Act. What are we going to do if that Patent Act is either repealed or amended? You will be referring to a vacuum. We think that could be reframed to write out what the relative procedure is with little additional verbiage or lengthening of the bill and make it clear and self-contained without reference to other statutes. Mr. LANHAM. Do you make a suggested change? Mr. STANLEY. We have no precise suggestions because we have not had the time. I started to write it up but I did not get far with it. It is a very simple matter to write that procedure into English. Mr. LANHAM. We would appreciate if you would offer us your suggestions on that, Mr. Stanley. Mr. STANLEY. We will try to do it. Mr. LANHAM. Thank you. Mr. STANLEY. As to the other suggestions that the American Bar Association has made I have entrusted Mr. Douglas, our secretary, with the duty of going over all of these suggestions and on the lefthand side putting in the committee print and on the right-hand side, H. R. 5461, and saying whether we agree or do not agree. We give reasons here and there and it is very simple to understand why we agree, because we think it is an improvement as to language, or as to syntax, and as to clarity of the situation. We have tried to be eminently fair in this matter, in this bill and its predecessors. I suppose over the years we have listened to all complaints that we receive. We have tried to meet them all. We have no ax to grind except from a businessman's standpoint, more than from the lawyer's standpoint. Mr. LANHAM. Will Mr. Douglas be here tomorrow? Mr. STANLEY. Yes, sir. Mr. DOUGLAS. You will have a complete copy of all this before the hearing is over. Unfortunately I have a prior engagement and have to be back in New York tomorrow, but Mr. Savage, a member of Mr. Stanley's subcommittee considering the revised trade-mark legislation will be here and be very happy to represent Mr. Stanley. Mr. STANLEY. We want to restate the verbiage with regard to State legislation. Businessmen have a viewpoint different very often from the lawyer's viewpoint. We are annoyed very much by State legisla 65855-41--10 |