by the above-named organizations, but will be submitted to them at once for their approval. The draft herein is a reconciliation of the divergent views of many of those who have heretofore advocated and opposed the proposed new trade-mark legislation, now so badly needed. This compromise has been agreed to only after long, studious, and careful consideration of all suggestions received from all sources and submission of preliminary drafts of it to all those shown on the committee lists herewith. 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, 1940 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. J. W. Fischer, Corn Products Refining Co., 17 Battery Place, New York. S. W. Fraser, Burroughs Wellcome & Co., 9 East Forty-first Street, 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. W. M. Wilson, International Business Machines Co., 590 Madison Avenue, New York. III 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. Daphne 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 and 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 Daphine Robert, all of the foregoing committees. Mr. SAVAGE. They devoted months of time to that and gave it serious study, and I think every one of them worked honestly to get a good trade-mark bill and he had no personal fish to fry in it. Mr. LANHAM. I am sure of that and, of course, gentlemen, without such gratuitous labor on the part of people eminent in this line of work, the committee could have made no headway. As stated by one of the gentlemen who wrote in suggesting some amendments, I am sure that we cannot get a law that is satisfactory to all members of the profession, but you have been very gracious and very generous in the matter of compromise, to get something that will at least be an effort to meet the situation that exists, and I am hopeful that we can get an enactment that will be more satisfactory than what you have at present, so that we can amend it from time to time, as experience and practice may dictate the wisdom of such amendment. Well, now, I want on behalf of the subcommittee to thank each and every one of you for your attendance here and for your very helpful suggestions, and we will give them very careful study. I am sorry that you have been called away from your homes at your own expense, but we have tried to be as expeditious as possible, and I hope that we, from the standpoint of the committee, can try to be deferential to each and every one of you and hear you in presenting your arguments. Mr. LIDDY. May we in turn thank the committee for the courtesy extended to us, not only on this committee but in every other committee hearing? (Whereupon, at 5 p. m., the committee adjourned.) APPENDIX LETTERS COMMENTING ON PROPOSED TRADE-MARK LEGISLATION LAW OFFICES OF BARNETT & TRUMAN, Chicago, October 23, 1941. Re H. R. 6618, Lanham bill. Hon. FRITZ G. LANHAM, House of Representatives, Washington, D. C. DEAR MR. LANHAM: I am advised by Mr. Kramer that your subcommittee will hold hearings on the trade-mark bill beginning Tuesday, November 4, 1941, and suggesting that I communicate to you anything I wish to say regarding that bill. I may be able to attend that hearing. In that event I should appreciate it, if it is not asking too much, if I might be at the head of your list of witnesses for, in any event, whatever testimony I may give will be very brief. As you may perhaps know, I have been a member of the committee on trademarks of the American Bar Association, of which Mr. Wallace H. Martin is chairman. As expressing my views in concrete form I drafted the Paddock bill, H. R. 1424, which differs from the Lanham bill mainly in omitting all contested proceedings with relation to registration in the Patent Office and provides simply that anyone may record in the Patent Office any mark which he is using under claim of exclusive right. The purpose of the Paddock bill is to leave the common law of trade-marks undisturbed, provide inducement for the recording of all marks in use under claim of exclusive right, so as to provide a comprehensive central record which will be accessible to anyone who is interested in learning whether his proposed trade-mark will conflict with any rights claimed by others. The Paddock bill does contain provisions which will enable United States registrants to comply with the requirements for foreign registration. However, while I am still convinced that the essential principles of the Paddock bill, leaving our common law trade-mark undistrubed, are sound, I recognize that I have been overwhelmingly outvoted on that proposition. In the event that I cannot be present in person at the November hearing I should appreciate if you will place of record the enclosed memorandum, thus avoiding any necessity of using this letter. I will add that notwithstanding my advocacy of the Paddock bill, I have worked conscientiously with the other members of Mr. Martin's committee in endeavoring to perfect the Lanham bill to the end that if the Lanham bill becomes law it shall, as nearly as possible, be unobjectionable and provide for adequately meeting all contingencies so far as we can now anticipate them. To my mind, a fundamental difficulty with the Lanham bill is that it, in effect, establishes a complete code of trade-mark law, thus taking trade-mark litigation away from the flexibility of the common law under which the outs can meet changing conditions and substitutes the rigidity of statute law where the only function of the courts is to interpret the statutory provisions. As we all know, it takes years of litigation and court interpretation to settle the meaning of any such code. Very truly yours, OTTO R. BARNETT. 211 MEMORANDUM SUBMITTED BY OTTO RAYMOND BARNETT I am a member of the firm of Barnett & Truman, Chicago, Ill., and have been engaged in the practice of patent and trade-mark law for over 50 years. I have been continuously a member of the trade-mark committee of the section of patents, trade-marks, and copyrights of the American Bar Association, of which Mr. Wallace H. Martin is chairman. In that capacity I have worked continuously with the other members of the committee with a view to perfecting the Lanham bill. If such a bill is to be passed I believe that the bill, with amendments as approved by the American Bar Association, is now as free from objection as careful study can make it, except only as to the proposed amendment of section 21 which was approved by the patent section of the American Bar Association at its July meeting. This section, as approved, provides that in case of contested proceedings in the Patent Office (interferences) the party dissatisfied with such proceedings may appeal to the Court of Customs and Patent Appeals or may proceed under section 4915, United States Revised Statutes. So far the section corresponds to the law as to appeals from Patent Office decisions in interferences between conflicting patent applications. The proposed amendment which was presented for the first time at the meeting of the patent section provides that in case of an appeal to the Court of Customs and Patent Appeals by the losing party, the winning party may compel the losing party to proceed under section 4915 instead of by appeal to the Court of Customs and Patent Appeals. Under section 4915 the proceeding is by way of an original suit where all proceedings are had de novo. From the decision of the court of primary jurisdiction an appeal will lie to the court of appeals, thus making the proceeding more expensive than a simple appeal to the Court of Customs and Patent Appeals. I see no reason why the successful party in the Patent Office should have the option of compelling the losing party who is dissatisfied with the decision to resort to the more expensive procedure. Furthermore, under section 4915, if the Patent Office decision is reversed then the losing party in the court of appeals always has the option of bringing an original suit under 4915 to reverse that decision. This proposed amendment which at first glance may have seemed logical, was "sprung" on the section without having been considered by the committee on trade-marks and was approved with little consideration and practically no debate. I think such approval was a mistake. While I have earnestly worked with the committee to perfect the provisions of the Lanham bill I have, nevertheless, always urged that the Lanham bill is fundamentally wrong in that it preserves and perhaps adds to the provisions for litigation in the Patent Office relating to the registration of trademarks where the only matter at issue and the only matter adjudicated is as to whether or not the mark under consideration shall be admitted to registration in the Patent Office or shall be excluded from the records of the Patent Office. Such adjudication never settles the substantive rights of the parties. Of course, such procedure excludes from the Patent Office records many marks which are in actual use, both because of rejections by the Patent Office and because undoubtedly many marks which are in use under claim of exclusive right never reached the Patent Office since the users of these marks see no advantage to them in Patent Office registration. The Lanham bill in substance in effect codifies the trade-mark law, whereas if the common law be left undisturbed the law retains its present flexibility, free from the rigidity of statutory provisions. The Paddock bill, No. 1424, drafted by me provides for simple and inexpensive recording in the Patent Office of all marks used under a claim of exclusive right, offering the same inducements for such recording as are offered by the Lanham bill, free from all provision for litigation in the Patent Office as to whether or not such marks shall be recorded, thereby leaving the wide equity and flexibility of the common law undisturbed. OTTO R. BARNETT. |