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Mr. LANHAM. Of course we will excuse you, and we appreciate your kindness in being here.

Mr. MARTIN. Thank you.

Mr. L. ROBERTSON. I should also like to make clear at this point, briefly, a point made by Mr. Brostoff last week, the difficulty that the printer is in; in this position, the printer has been printing advertising for the real user, the synthetic user with his registration comes along and says that his registration is incontestable.

Now, as to whether his registration or not is a matter of fact, depending upon the continuous use here, and whether he has incontestable rights here at this point depends on how long this continuous use is. The printer cannot possibly determine that, he cannot tell what the rights are. The Nation-wide rights are not given to the registrant at the time of the application, and they are not given to the registrant until incontestability and then they are made retroactive back to this time.

There may have been dozens of other uses of a descriptive mark during these 5 years, but this will not prevent incontestability, because the registrant does not even need to allege that there has been exclusive use during those 5 years. All he needs to allege is continuous use, and his mark is automatically incontestable.

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

I have some other matters, gentlemen.

I have a letter here from Mr. Walter C. Hughes, and maybe some of you gentlemen know him:

In view of what has transpired in the past, I submit the following:

Section 1 should include a proviso-that no mark shall be so registered unless the application is filed within 3 years after the first usage of the mark in interstate commerce.

That is his suggestion.

The next suggestion:

Section 15, first paragraph-eliminate "five" and substitute therefor "three." I dare say that would not be satisfactory to a great many gentlemen present.

Section 23—in the paragraph beginning "For the purpose of registration on the supplemental register, etc." eliminate the words "package, configuration of goods." While I fully appreciate the reasons for including them, it seems to me that it would be unwise to clutter up the records of the Patent Office with bottles, tin cans, etc., which undoubtedly would be submitted for registration under this provision.

Then he says:

With all due reverence, it is also my opinion that the Lord Himself could not draft a bill which would meet with the entire approval of a majority of the trade-mark lawyers.

But I think that we have given consideration to those matters at various times, and now we have another letter.

This is from the National Retail Dry Goods Association,1 and refers, I believe, to the penal provisions, does it not?

We respectfully request that you reconsider section 41 and either eliminate it entirely or amend it so that no retailer will be subjected to a possible fine or imprisonment unless actually guilty of a conspiracy to violate the provision. That has been eliminated.

1 Complete letter printed in Appendix, p. 234.

As to the second paragraph of section 41, which provides a penalty of not less than $100.

That has been deleted.

Here is one from the Rochester patent group,1 and they say:

Section 8 (a) requires the registrant to file an affidavit of use within six years, otherwise the registration shall be cancelled. It is questioned whether this provision is not too harsh and whether the desired result could not be accomplished by providing that failure to file the required affilavit would constitute prima facie evidence of abandonment. The question is also raised as to whether power should not be given to the Commissioner to waive the strict application of this section where satisfactory showing is made that the failure to file the affidavit of use has been through inadvertence, accident, or mistake, and without intent to abandon the mark.

I think that we have discussed that pretty generally.

It says:

Section 12 (b) states that a trade-mark application may be prosecuted until "the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown that the delay in replying was unavoidable, whereupon such time may be extended." This provision is indefinite since it does not indicate whether the delay in "replying" in the next to the last line refers to either "reply" or "amend" or "appeal." The uncertainty would be removed by using the same wording in both places.

Mr. FENNING. What section is that?

Mr. LANHAM. That is section 12 (b). That is probably 12 (b) of 5461.

Mr. FENNING. That could be corrected by saying in line 7, "by replying or amending."

That is in line 15.

Mr. LANHAM. On the committee print, that is on page 14, isn't it? Mr. FENNING. Yes; but it runs over to page 15.

That is on line 7, page 15. I think it is better to leave it alone, an amendment will be included in a reply and it would have to be a reply or an amendment, or something, anyhow.

Mr. FRAZER. Substitute the word "responding" for "replying" in line 7.

Mr. LANHAM. That is on line 7 on page 15, the word "responding." All right, if there is no objection we will change that and that will make it clearer, I think.

Mr. HANDLER. Is that to respond?

Mr. LANHAM. In line 7, it is in responding.

Section 29 provides that the requirement "as to notice" shall be deemed fulfilled in the case of goods of foreign origin if the mark is accompanied by a statement of registration in the country of origin. This might lead to confusion because goods might be marked with a mark registered in a foreign country but not actually registered in the United States. In any event, we believe the privilege of section 29 should be extended only to citizens of those foreign countries which accord reciprocal privileges to citizens of the United States.

I know Mr. Rogers has dealt quite a bit with that.

Mr. ROGERS. That deals with the convention provisions. The conventions do provide that if a mark bears the notation of registration current in the country of origin, it should be sufficient.

Now, for example, in the Argentine, if we put "registered, United States Patent Office," or "Trade-mark registered," or something of that kind that applies to registrations down there.

1 Complete letter printed in Appendix, p. 236.

Mr. LANHAM. In your judgment the present provisions meet the situation?

Mr. ROGERS. Yes; it is greatly to our benefit.

Mr. LANHAM (reading):

Section 44 (g) states that trade names and commercial names of citizens of convention countries shall be protected "without obligation of filing or registration" and subsection (i) of this section states that citizens or residents of the United States "shall have the same benefits." These subsections seem to be indefinite. It is not understood what is the protection that is afforded. Mr. FENNING. That is a treaty matter again. Mr. LANHAM. Yes; that is a treaty matter. thing.

That is all right.
That seems to be the

The others here are endorsements, they are not suggestions for amendments.

Mr. FENNING. I wrote a letter to you on one amendment which has not been considered.

Much has been said here concerning the right or necessity of going to the Patent Office to see what mark has been registered. I have always felt and I have always endeavored to get in every one of these bills a proviso saying that when a mark is once registered, although the mark may be used only in one corner of the United States, no one thereafter should be allowed to obtain any right to use that mark in any other corner of the United States.

Now, that is implied more or less in some of the sections, but it seems to me that it should be very definitely and distinctly stated. I would suggest, therefore, on page 5, after line 17, there be inserted:

No right to use of a registered mark, or one similar thereto, shall accrue by use on similar goods, commencing after registration, without authority of the owner of the registration.

That merely means if you register a mark, no one else can acquire any rights by beginning to use that somewhere else.

An honest concurrent user is not a concurrent user who begins after registration of a mark to someone else.

Mr. T. E. ROBERTSON. Could we have that read again?

Mr. FENNING. The words are:

No right to use of a registered mark or one similar thereto shall accrue by use on similar goods, commencing after registration, without authority of the owner of the registration.

Mr. HANDLER. That is not intended to apply to marks now in use? Mr. FENNING. No; the courts will take care of the deceptive. Mr. SAVAGE. Could you not leave out "similar goods," because I do not want to get goods of the same character in the act again?

Mr. FENNING. "Similar products" is the term used in the bill.

Mr. SAVAGE. For purposes of registration, the act says, if I can get the language of it, I think that you could use the same language in there, that they—

shall not use the same or similar mark which when applied to his goods is apt to cause confusion or mistake.

Mr. FENNING. If you want to write all of those words in here, I think that you will get it tangled up.

Mr. HANDLER. I believe that Mr. Fenning's suggestion goes perhaps much further than he intends. If you take the telephone books, the commercial directories, of any large cities in the United States-Los Angeles, San Francisco, New York, Houston, Texas, Madison, Wis.—

and look under the various letters of the alphabet, one will be amazed to find the same business names which are used in trade-marks in different parts of the United States.

We are not dealing here with a sporadic situation; we are dealing with something that is most customary, and now, under this suggestion of Mr. Fenning, every businessman in the United States must at his peril subscribe to the Official Gazette and read that each week as it comes out, because from the moment the mark is recorded he is under constructive notice.

His suggestion, as I understand it, and, of course, I have not seen it before me, does not refer to use after the recordation of the mark of the first registrant.

Would you read that over again?

Mr. FENNING (reading):

No right to use a registered mark, or one similar thereto, shall accrue by use on similar goods commencing after registration.

If a man is using a mark before registration, the registrant has no right to it.

Mr. HANDLER. Does not that mean a man in a small shop opening up a market in 1940?

Mr. FENNING. He is intrastate.

Mr. HANDLER. Could not the national person come in and hold him guilty?

Is it infringement in interstate commerce?

Mr. FENNING. That is all that Congress has jurisdiction of. There are a couple of cases in the courts where they have kicked them out. Mr. HANDLER. I understood that that was the earlier law, but I wondered whether it was the meaning of this statute.

Mr. PLAUCHÉ. You mean to say that I could put out some product, and use the name of Coca-Cola, just in intrastate business?

Mr. FENNING. As far as this bill is concerned, you could, but, of course, common law and your State courts would take care of that, but as far as the Federal courts are concerned

Mr. HANDLER. Would the incontestability apply to lawsuits in the State courts?

Mr. FENNING. Incontestability applies only to the Federal courts, and to interstate use. That is all that this bill has to do with. Mr. LANHAM. What is your reaction, gentlemen, to this suggestion?

Mr. SAVAGE. I think it is in there already, and I see no reason for repeating it.

Mr. FENNING. I cannot find it in there.

Mr. SAVAGE. I think it is in there by implication but I have no objection to it going in.

Mr. L. ROBERTSON. I think it is definitely precluded during the first 5 years by section 34 (a) which says that the defendant shall have all of the defenses except the defense of lack of jurisdiction, which he would have if this act were not passed.

If you are going to give Nation-wide rights at the end of 5 years and make them retroactive, it would be much better to give them from the registration. In both cases, I think that there should be some duty on the registrant to be diligent, and certainly in both cases there should be clear preservation of the law of acquiescence. I think that Mr. Fenning's proposal would not bar acquiescence.

Mr. SAVAGE. Since section 22 charges everyone with knowledge of the mark when registered, and the second user can get rights only if he adopts the mark without knowledge of the other, it would be impossible for him to do it under the bill as it now reads because he could not adopt the mark innocently after it had been registered by another.

Mr. FENNING. Note, if you will, that section says "constructive notice," and some of the other sections say "without knowledge." Now, constructive notice does not mean that he has absolute knowledge.

Mr. SAVAGE. I have no objection to it going in.

Mr. FENNING. Let us make sure.

Mr. LANHAM. Now, if you adopt the suggestions made by Mr. Savage, by way of amendment to your amendment

Mr. FENNING. Without the words before me, I think I do, at least Mr. Savage and I think that we can together reframe this.

Mr. SAVAGE. For once we do.

Mr. FENNING. We will submit that to the committee.

(Mr. Savage and Mr. Fenning later agreed to the following:)

Section 2 (d) committee reprint, p. 5, line 17, add: "No right to use of a registered mark or one similar thereto shall accrue by use on goods on which the use may cause confusion or mistake or deceive purchasers, commencing after registration without authority of the owner of the registration."

Mr. HANDLER. At the conclusion this morning, you asked whether I would not read into the record the suggestions that I made, crystalizing my view of section 34 (5) and I have prepared that.

Mr. LANHAM. That does not refer to this.

Section 34, subsection (b) (5), that is page what, Professor?

Mr. HANDLER. That is page 30. I would suggest the insertion of the following subdivisions at line 3 of page 31, to read as follows:

Subdivision 6. That the mark whose use by the defendant is charged as an infringement was registered prior to the publication under section 12 (c) of the registered mark of the registrant.

That is to take care of this situation. At the time this bill is in effect there are two marks now on the register, and one of the two gets his statement under 12 (c) received and published first.

Now, it would be most inequitable if a man's registration that has been on the register for many years, were to be clouded with uncertainty by virtue of the provisions of this statute, and you will recall in the discussion this morning, I made some criticism of section 5.

Mr. Martin said that subdivision 5 related to the use after the new registrations under the statute, and he was not thinking about the case of marks which have been concurrently registered in the past. He did not think that the rights of such a registrant should be affected by granting incontestability rights to the man who files the statement under 12 (c). This would leave the situation as it now stands. If the marks are on the register there will be no incontestability as against the defendant.

That does not mean that the plaintiff still will not have his commonlaw rights against that defendant if he feels that that second mark should not have been put upon the register.

It does not deprive the first fellow of any rights, and by the same token it should not deprive the second fellow of any rights.

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