tion and we are annoyed by picayunes who go out and try to scare the manufacturers into registration under State laws with some reason which while it sounds plausible at the time does not hold water. And I would like to call the attention of you, Mr. Chairman, and members of the committee that Federal legislation is now going very deeply into interstate legislation. It is now integrated to such an extent that the time is coming when I think State legislation will have to take a very much background position to the Federal legislation. We are, therefore, for the restoration of the language regarding State legislation an interference.

I think that with the provision that we supply you with the material promised we have covered the ground fully.

Mr. LANHAM. It might be well if it is not too voluminous to insert it in the record.

Mr. STANLEY. We have no pride of authorship. We want to be fair. We are not taking any stringent position on the bill. We are well satisfied that our coordinating committees have worked so well and provided H. R. 5461, which is 102 amended, plus Senate 895. We are grateful for the help we had and we had thought that might be accepted but the more we look into it the more we agree with most of the changes of the American Bar Association.

Mr. LANHAM. Thank you very much, Mr. Stanley.

Mr. STRUVEN. Mr. Chairman, may I raise just one question here? Mr. LANHAM. But Mr. Fenning and Mr. Handler had asked to do the same thing.

Mr. STRUVEN. I merely wanted to ask as to the question of ownership and use.

Mr. LANHAM. Are you going to be here tomorrow?

Mr. STRUVEN. No, sir; I would like to submit my papers today if possible.

Mr. LANHAM. I shall be glad for you to submit your paper. Of course, we only have 5 minutes.

Mr. STRUVEN. I will only take 30 seconds.

Mr. LANHAM. All right.

Mr. STRUVEN. On this title question of States and Federal that can be eliminated in just 5 seconds, by differentiating between this question of ownership and use. Let it be distinctly understood Congress is legislating on the use of trade-marks and ownership. The States can legislate on ownership and probably will unless we do it here. I would like to introduce my brief 1 on that one point.

Mr. LANHAM. Well, it makes for the whole record. Just put it in the record.

Mr. STRUVEN. I would like to clear up that one point.

Mr. LANHAM. Yes, thank you, sir.

Professor HANDLER. I am keeping my eyes on my watch because I am rather long winded, I am afraid. I am genuinely puzzled by section 19, which I should like to read, on page 19 of the committee print. It reads as follows:

In all inter partes proceedings the equitable principles of laches estoppel, and acquiescence, where applicable may be considered and applied.

And then it goes on to the top of page 20, lines 1 to 3 and reads as follows:

1 See apppendix, p. 243.

The provisions of this section shall also govern proceedings heretofore begun in the Patent Office and not finally determined.

Now, I have always been under the impression that it is unfair to change the rules in the middle of the game. Here is a provision which is designed to outlaw pending actions now before the Patent Office and it would appear to me that this provision, which strikes me as quite extraordinary, should receive some explanation in the record.

Mr. LANHAM. I think it would take a little more time than we have this morning, of course, to get into that.

Mr. PLAUCHÉ. The professor has noticed the provision of that amendment and the apparent conflict with section 50 of the reprint. Mr. HANDLER. There are quite a few conflicting sections. On the retroactive effects of this legislation I should like to be heard at some length on Friday if I may.

Mr. KLEIN. One moment. If it would not be too much trouble, professor, when we meet again can you tell us if there are any actions pending at the present time and what the actions are?

Mr. FENNING. There are hundreds of them.

Professor HANDLER. I can tell you of one, in which I represent a client of mine. As I look around the room I see four of the gentlemen here who represent the company with whom we are litigating in the Patent Office.

Mr. LANHAM. Mr. Fenning says there are hundreds of such cases. Mr. Scort. I hope you will give us the benefit of your thought in the matter and perhaps a brief, if it is not too long. I am very much impressed with the suggestions you make. There seem to be inconsistencies between this section 50 and other sections.

Professor HANDLER. I shall be delighted to.

Mr. SCOTT. Personally I hate to see rules changed in the middle of the game if we can find an equitable way to avoid it.

Professor HANDLER. Thank you very much.

Mr. LANHAM. We will reassemble tomorrow morning at 10 o'clock. (Whereupon the hearing was adjourned to Friday, November 14, 1941, at 10 a. m.)

TRADE-MARK

FRIDAY, NOVEMBER 14, 1941

HOUSE OF REPRESENTATIVES,

SUBCOMMITTEE OF THE COMMITTEE ON PATENTS,

Washington, D. C. The subcommittee met at 10 a. m., Hon. Fritz G. Lanham presiding. Mr. LANHAM. The meeting will come to order.

Let us see if we cannot be brief in our discussion today and make it quite to the point because there are many matters pressing upon all of us that require our time. And though we of the subcommittee are not experts in trade-marks still we can, without too much amplification, I think, get the idea you have in mind if you state it succinctly.

In the first place, I wish to place in the record at this point a suggested amendment of section 21 in accordance with the statement made by Mr. Stanley yesterday. He is submitting this for the consideration of the committee.

Suggested revision of section 21 to incorporate the applicable provisions of R. S. 4911 and 4915.

SEC. 21. Any applicant for registration of a mark, party to an interference proceeding, party to an opposition proceeding, party to an application to register as an honest concurrent user, party to a cancellation proceeding, or any registrant who has filed an affidavit as provided in section 8, who is dissatisfied with the decision of the Commissioner may appeal to the United States Court of Customs and Patent Appeals, unless appeal has been taken to the United States Court of Customs and Patent Appeals, and such appeal is pending or has been decided, in which case no action may be brought under this section, may have remedy by bill in equity, if filed within six months after such refusal or decision; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such petitioner is entitled, according to law, to receive a certificate of registration of his trade-mark or such other relief to which he is entitled, as may appear from the facts and proceedings in the case. And such adjudication, if it be in favor of the petitioner, shall authorize the commissioner to issue such certificate of registration or grant the other relief to which the petitioner is entitled on the petitioners filing in the Patent Office a copy of the adjudication and otherwise complying with the requirements of law. In all cases where there is no opposing party, a copy of the bill shall be served on the commissioner and all expenses of the proceedings shall be paid by the petitioner, whether the final decision is in his favor or not. In all suits brought hereunder where there are adverse parties the record in the Patent Office shall be admitted in whole or in part, on motion of either party, subject to such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court may impose, without prejudice, however, to the right of the parties to take further testimony. The testimony and exhibits, or parts thereof, of the record in the Patent Office when admitted shall have the same force and effect as if originally taken and produced in the suit.

And upon the filing of a bill in the District Court of the United States for the District of Columbia wherein remedy is sought under this section without seeking other remedy, if it shall appear that there is an adverse party residing in a foreign country, or adverse parties residing in a plurality of districts not em

141

braced within the same State, the court shall have jurisdiction thereof and writs shall, unless the adverse party or parties voluntarily make appearance, be issued against all of the adverse parties with the force and effect and in the manner set forth in Sec. 113, Title 28, U. S. C.: Provided, That writs issued against parties residing in foreign countries pursuant to this section may be served by publication or otherwise as the court shall direct.

If any party who is dissatisfied with the decision of the Commissioner shall have filed his notice of appeal to the United States Court of Customs and Patent Appeals, such appeal shall be dismissed if any adverse party, within twenty days after the appellant has duly filed his notice of appeal, shall file notice with the Commissioner that he elects to have all further proceedings conducted by bill in equity as provided above. Thereupon the appellant shall have thirty days thereafter within which to file such bill in equity, in default of which the decisions appealed from shall govern the further proceedings in the case.

Mr. Savage, in just a moment you can tell us what the foregoing suggested amendment does, can you not?

Mr. SAVAGE. Yes. Mr. Stanley had to leave last night, but he left his revision of section 21 with me.

Mr. LANHAM. As I understand it, it merely sets out in language what certain sections that are referred to by title in the bill provides?

Mr. SAVAGE. Yes; it does. As rewritten it starts out with section 21 just like it appears on page 20 of the committee print and follows that down through lines 8 and 14 and from there on instead of referring to sections 4915 and 4911

Mr. LANHAM. It sets out their terms?

Mr. SAVAGE. It sets out their terms, using reference to "trade-mark matters" rather than patent matters.

Mr. FENNING. Mr. Chairman, that ought to be examined very carefully to determine that it says what the law is now and what we think it says. Merely copying 4915 and 4911 will not accomplish much.

Mr. SAVAGE. It was not revised in view of the decision of the Court of Appeals of the District of Columbia in which they permitted action to be brought against the Commissioner only in a contested case.

Mr. LANHAM. Of course, it is being placed in the record here as the suggestion of Mr. Stanley.

Mr. FENNING. May I make two suggestions for amendments to section 21? One evidently is not contained there, from what he said. The Court of Appeals of the District of Columbia, on October 27, 1941, decided Tomlinson of High Point v. Cole (51 U. S. Patent Quarterly 249). It is the culmination of difficulties which 4915 trademark cases have encountered. When two parties are in a patent interference in the Patent Office they go into 4915. The Commissioner of Patents takes no part and is not a necessary party. When,. however, there is a contested case of opposition, cancelation, or an interference with respect to trade-mark rights the courts have wobbled somewhat, some saying the Commissioner of Patents is possibly a party, some saying he need not be a party, and some saying what this opinion says, the opposing party need not be a party but only the Commissioner of Patents need be a party.

Mr. LANHAM. You want to clear up that ambiguity?

Mr. FENNING. Most of us think that is improper law. I am suggesting that we do add in section 21 these words, "The Commissioner shall not be a party in inter partes cases. You see, when it is an inter partes case the parties themselves have fought in the Patent Office. The Commissioner has been the judge who has decided the