Re Lanham bill (H. R. 5461) Hon. CHARLES KRAMER, Hon. FRITZ G. LANHAM, BARNETT & TRUMAN, Chicago, November 22, 1941. Hon. VANCE PLAUCHÉ, Hon. WILLIAM H. STEVENSON, House Office Building, Washington, D. C. DEAR SIRS: In accordance with the suggestion of Mr. Wallace H. Martin, chairman of the committee of the American Bar Association, of which I am a member, I beg to submit to you my views as to section 4 and section 29 of the committee reprint of the Lanham trade-mark bill. As to section 4, I am in full accord with Mr. Martin's letter to you of November 17. As to section 29, I am entirely at variance with Mr. Martin's views. I believe this section 29 should be incorporated in the law. Such marks as would come within section 29 are marks which are in actual use under claim of exclusive right. There is no secrecy about them but, for purposes of search by one intending to adopt a new mark there is no central record available for many of these marks for the simple reason that many trade-mark owners will not risk the complication and expense which may be incident to applications for registration in the Patent Office under the present law but prefer to stand on their common-law rights. Hence there is no central record to which reference may be had by searchers. The inducement for registration offered by section 29 is that the expense is nominal for filing a "keep off the grass" notice by the user of the mark. In addition, it would be a simple matter to also include the provisions of section 12 of the Paddock bill, H. R. 1424, giving the Federal courts jurisdiction of all litigation affecting any mark recorded in the Patent Office with a provision that as to marks recorded under section 29 no presumption in favor of the claimant would arise from such recording, leaving him to rely on his common-law rights and subject, of course, to all common-law defenses. The only object of giving Federal courts jurisdiction of trade-mark litigation as to marks recorded under section 29 would be to offer that as an inducement for recording. Answering Mr. Martin's objections to section 29 seriatim: 1. It would tend to defeat the very purpose of this legislation, viz, to give an incentive to register and thus provide a file of valid trade-marks for search purposes. I take exception to the implication that registry in the Patent Office establishes validity of a trade-mark. Primarily, it establishes nothing more than the opinion of the Patent Office that the mark is a valid mark entitled to registration in the Patent Office under the statute. No decision, however, constitutes an adjudication which may be invoked by the registrant as conclusively establishing the validity of his mark. The second implication is that it is the purpose of the Lanham bill to force unwilling trade-mark owners to register their trade-marks. I cannot believe that such a purpose is justifiable. If we include section 29, then the trade-mark owner may be as free as air either to register his mark under the provisions other than 29 and obtain all the advantages flowing therefrom or merely to record his mark under section 29, thus tending at least to give a record in the Patent Office which will be a more complete record of trade-marks used or in use under claims of exclusive right than will ever be possible under the Lanham bill without section 29. 2. Under the provision of section 29, no rights whatever would accrue to the owner of the mark deposited. Thus, it would be possible for a crook to steal the marks appearing on this register and use them in territories other than the territory where the owners of the marks used them. The fallacy of this objection is that the mark recorded under section 29 is publicly used somewhere, and any "crook" so disposed can appropriate that mark in territory other than the territory where the owner of the mark uses it. Also that in contemplation of law there is no conflict between the user of a mark, say, in California and the user of a mark in Illinois where their trade does not overlap. Such has been repeatedly adjudicated by the Supreme Court. The previous suggestion made by me that Federal courts be given jurisdiction of trade-mark litigation involving marks recorded under section 29 does offer an additional inducement for depositing the mark. Not only so, but if, because of simple recording at a minimum expense without any complications, trade-mark owners get into the habit of recording their marks in the Patent Office it may well be that the owners of marks so recorded may come to see it to their advantage to supplement such recording with a formal registration in many instances where they would give it no thought whatever. 3. In the course of a few years the file of marks deposited in accordance with the proposed amendments of section 29 would be of little help as a search file because of the accumulation of deadwood. I believe it would be to the interest of prospective adopters of a new trademark to know whether a given mark is or ever has been in use. With that information they have a starting point to investigate or to drop the mark. Under the present system and under the Lanham bill without section 29 they never can make "an accurate search of active valid marks" for the simple reason that there are many more marks in use which are not registered and will not be registered under the Lanham trade-mark bill than there are which are registered. Every trade-mark attorney in advising his client as to a trade-mark which the client proposes to adopt, if he is conscientious as to advising the client, will state that his opinion is solely based on such information as is available in the Patent Office or from other information, and may be completely negatived by trade-marks in use which are unregistered and of which no record has been called to his attention. I have always felt that a fundamental fault of the present statute, as well as of the Lanham bill, is that it is designed solely to keep marks off of the register which are in active use under claims of exclusive right. If, for example, a man is using a mark which he believes has attained the status of a trade-mark in his business, and if the Patent Office holds that such mark is not a valid mark, it is refused registration and does not appear in the Patent Office files, although the owner of the mark will undoubtedly continue using it and may some time persuade a court, in case of infringement, that it is a good mark. If an applicant for registration is in interference with another applicant and there is a dispute as to similarity of marks or as to similarity of goods upon which the marks are used, the Patent Office decides in favor of one applicant; in the great majority of cases the other applicant whose mark is refused registration continues, nevertheless, to use his mark on his line of goods, relying upon the common law to defend his right to use that mark if attacked in the courts or if infringed by others. This mark which is so similar to the mark of the successful interferant does not appear in the Patent Office records and is not discoverable by a searcher. I believe that my friend, Mr. Martin, if the question were fairly put up to him, would admit that there is no such thing as "an accurate search of active valid trade-marks" possible, either under the present statute or under the Lanham bill. 4. A file of marks in the Patent Office can be helpful for search purposes only if it contains marks which have been found to be valid by the Patent Office. A file of marks not approved by the Patent Office as valid will undoubtedly contain so many invalid marks that it will be useless as a search file. Here, again, my previous comments are pertinent. It must be borne in mind that any pronouncement by the Patent Office that a trade-mark is valid is merely a pronouncement that it is valid so far as registration in the Patent Office is concerned. It is never an adjudication as to the substantive right of the registrant to use the mark, nor is the refusal of the Patent Office to register the mark an adjudication as to any substantive right of the applicant whose claim is rejected. Those questions are still open for litigation under the common law wholly apart from any question of Patent Office registration. In brief, the inclusion of a mark in Patent Office registration is no definite adjudication that the mark is a valid trade-mark or that if valid the registrant is the lawful owner of it, nor is the omission of such trade-mark from Patent Office registration at all conclusive that the marks omitted are not lawful trademarks owned by the user thereof. I suggest, therefore, the inclusion of the paragraphs taken from section 12 of the Paddock bill, H. R. 1424, which is enclosed herewith. This will in nowise conflict with the remainder of the Lanham bill and will offer an additional inducement for recording marks under which the owner claims exclusive trade-mark right and will do much toward providing a complete register in the Patent Office of such marks. Very truly yours, O. R. BARNETT. Any person who shall, in commerce, without the consent of the party recording a trade-mark under section 29 (a), reproduce, counterfeit, copy, or colorably imitate any mark registered under this act; or (b) shall apply such reproduction, counterfeit, copy, or colorable imitation to merchandise or services of such a character that the use thereof is likely to cause confusion or mistake or to deceive purchasers, or to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale of such merchandise or services; or (c) shall otherwise use such reproduction, counterfeit, copy, or colorable imitation falsely to indicate that the goods or services are the goods or services of a person who shall have so recorded a mark under this act, shall be liable in a civil action by the recording party for any or all of the remedies hereinafter provided. In such action any certificate of recording under section 29 issued under this act and owned by the plaintiff shall be admissible in evidence, but shall not be evidence of plaintiff's exclusive right to the use of the mark therein described on the goods therein specified but shall only be prima facie evidence of plaintiff's right to have his claim of infringement adjudicated under the provisions of this act. The rights of the parties shall be adjudicated upon the proofs adduced as to plaintiff's alleged exclusive rights, defendant's alleged violations thereof, and any proper defenses pleaded. Hon. CHARLES KRAMER, WASHINGTON, D. C., October 31, 1941. House of Representatives, Committe on Patents, Washington, D. C. DEAR SIR: In reply to your letter of October 22, 1941, addressed to my associate, Mr. Charles R. Allen, I respectfully submit the enclosed comments and criticisms on, and suggested amendments to, the proposed new trademark statute. Mr. Allen concurs in most of my comments, etc., and as to those in which we are not in agreement, he will write you his own views. One or the other, or both of us, should like to attend the hearing and perhaps offer our suggestions. The undersigned was for 20 years first assistant examiner of trade-marks or acting first assistant examiner of trade-marks in the United States Patent Office and exercised considerable influence in the interpretation and administration of the existing trade-mark statutes, more particularly in ex parte questions. My interest here is in helping to shape a law which will present the least difficulty to the interpreter and to the administrative officers of the Patent Office. While these suggestions are offered rather late in the day, most of them were from time to time called to the attention of one or another member of the general or subcommittee engaged in the framing of the bill. Further, when the hearings on the original bill were held, the writer was ineligible to take part in the discussions having been at that time still an official of the Patent Office, not having been retired until February 1, 1941. Very truly yours, G. C. CALLAN. COMMENTS AND CRITICISMS ON, AND SUGGESTED AMENDMENTS TO, H. R. 5461 Section 1, paragraph (a) (1) Cancel the words "the date of applicant's first use of the mark," in lines 2 and 3 of page 2. Remarks. The words proposed to be canceled are clear surplusage. It is submitted that the proposed legislation is, after all, a trade-mark registration law. Clearly, no sign, symbol, word, or combination of words, or other indicia of any kind comes into being as a trade-mark until it is used in commerce. Section 1, paragraph 2, line 25 at bottom of page 2: Cancel the word "and" and insert as item 3, the following: "a description of the mark, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the Commissioner; and" At top of page 3, line 1, change the numeral "(3)" to "(4)". Remarks. Not all trade-marks can be properly illustrated on a drawing. For instance, an applicant for registration of a star-shaped figure may wish to limit his mark to a star in which the top half is red and the lower half blue. Of course, he may indicate on the drawing that the top half is red by lining it vertically and that the bottom half is blue by lining that part horizontally, according to the chart published in the Rules of Practice of the Patent Office, opposite page 58. This lining is intelligible to the patent attorney, but to the general public and generally to the registrant himself it is meaningless. Under the present practice, such lining shown in the illustration is interpreted as being for shading only unless described as representing colors. Further, such lining without description would be confusing to the searcher for anticipations. In the search room in the Patent Office color marks are, in general, separately classified. It would seem further that a description is necessary when it is desired to present the signature or portrait of a particular individual. Section 2 (c), line 6, page 4: Cancel the word "name." Remarks. While portraits and signatures of particular individuals belong to such individuals, they have no exclusive right to their names. Assuming that some client asks his attorney to apply for registration of the name "John Smith," under this section as written, the attorney has to get the written consent of John Smith before he can register the mark; but which "John Smith" must he ask for such consent. There are several "John Smiths" scattered around the country. Must, therefore, the attorney procure the consent of every "John Smith"? Moreover, the provision here seems to be superfluous since at the end of section 2 (e) there is a prohibition of registration of any trade-mark which "is primarily merely a surname." Incidentally, isn't the word "primarily" in the last line of section 2 (e), line 23, of page 5, surplusage? Under section 5 of the existing statute, the name of a living individual may not be registered unless it is "written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual." There is no such provision in the new act. Under the existing law, signatures are regarded as being the names of individuals distinctively displayed, within the meaning of the act. The query is, Is the name of an individual, not a signature, registrable if distinctively shown? The provision in paragraph (f), section 2, lines 3 to 8, page 6, that the "Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant's goods in commerce, proof of substantially exclusive 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 registration," is a step in the wrong direction. Under an analogous provision in the 1905 act, the so-called 10-year proviso, it is not necessary that the applicant furnish proof of exclusive use for the required period, but merely that he allege that he has had such use, his allegation being, of course, supported by his sworn "declaration" filed as a part of his application. The section as written leaves to the discretion of the examiner of trade-marks, acting for the Commissioner of Patents, the determination of the character and sufficiency of the proof required. This provision, as written, is not a liberalization, but rather the contrary. It is suggested that the lines referred to be rewritten to read: "The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant's goods in commerce, the applicant's allegation under oath to the effect that the mark has been in actual and exclusive use by the applicant, or applicant's predecessors, for the 5 years next preceding the filing of the application for its registration." The provision for the registration of "service" trade-marks in section 3 rests on a sound basis, but it is going to necessitate a considerable additional labor in the administration of the law in the Patent Office. Unless Congress provides for an increase of at least 50 percent in the examining and clerical forces handling trade-marks in the Office, you will have a jamb in the Patent Office for a year or more following the passage of the act. It is my suggestion that section 7 (d) be amended by inserting after the word "amended" in line 15, page 9, "shall be subject to examination by the examiner of trade-marks, that it". Remarks.-The Trade-mark Division is the proper office for the initial determination as to whether or not the registration as amended "shall still contain registrable matter," or whether the mark "shall still be registrable as a whole," or whether the amendment or disclaimer involves such changes in the registra tion as to necessitate republication of the mark. It is suggested that section 12 (c) be amended as follows: Substitute for the words: "a registrant of a mark registered" in line 3, page 15, the following: "The owner of an unexpired registration of a trade-mark effected," so that the first four lines of section 12 (c) will read: "The owner of an unexpired registration of a trade-mark effected under the provisions of the act of March 3, 1881, or the act of February 20, 1905, may upon the payment of the prescribed fee file with the Commissioner a statement that the said mark is in use." Section 13, like section 7 of the existing law, provides for the filing of an opposition to the registration of any given mark within 30 days after the publication of the mark in the Official Gazette of the Patent Office. However, we then find the additional provision that "For good cause shown, the time for filing notice of opposition may be extended by the Commissioner who shall notify the applicant." This provision is objectionable as being indefinite, as placing too much power in the hands of the Commissioner, and as an injustice to an applicant. In cases where the publication of a mark has been overlooked by a potential opposer, the final clause in this section provides that an opposition may be filed by a duly authorized attorney and may be "verified by the opposer within a reasonable time after such filing." This conforms to the provision in section 7 of the existing statutes and is believed to provide ample protection to a possible opposer, particularly in view of the fact that if the mark is not opposed within the statutory period, the objector still has his remedy by way of cancelation. It is suggested for the reasons indicated above that the proviso beginning with the word "For" in line 20, page 15, and ending with the word "applicant," in line 22, be canceled. Section 15 should be canceled. No court is going to accept this section as a restriction on its discretion in a suit for unfair competition, even where such unfair competitor is the owner of a registration under this act. In any such case, if the court finds that the registrant is guilty of unfair competition, nothing in this section is going to prevent such court issuing an injunction against such registrant's use of his registered mark. Sectio 33 (b), pages 28 and 29, should be canceled for reasons indicated above with reference to the second paragraph of section 15, lines 6 and 7, page 17. Section 32 should be amended by inserting before the word "registered," in line 3 thereof, line 17, page 26, the word "mark," and by inserting after such word "registered" the words "on the principal register of this act," for the reasons indicated in the suggested amendment to section 23. Marks registered under the act of March 19, 1920, should not be given this protection, being, generally, a type of mark which is publici juris. Hon. CHARLES KRAMER, FEDERAL SECURITY AGENCY, Chairman, Committee of Patents, House of Representatives, Washington, D. C. MY DEAR MR. CHAIRMAN: Reference is made to S. 895, which passed the Senate on September 17, 1941, and is now before your committee, to H. R. 5461, and to a proposed bill, print dated November 4, 1941, "To provide for the registration and protection of trade-marks used in commerce, to carry out the provisions of certain international conventions, and for other purposes." It is my desire to call to your attention the effect of certain provisions of the proposed bill on the Federal Food, Drug, and Cosmetic Act, administered by the Food and Drug Administration of this agency. The Food, Drug, and Cosmetic Act provides for the protection of purchasers of foods and drugs by requiring, with certain exceptions, that the label of any such product bear the common or usual name of the product and the common or usual names of its ingredients. The provisions of the bill, which will hereafter be referred to more particularly, are inconsistent with these requirements. The provisions establishing such requirements and the legislative history of the Food, Drug, and Cosmetic Act make it clear that Congress recognized the economic disadvantage to consumers which would result from the sale of foods and drugs under unfamiliar designations, and the dangers to public health inherent in the distribution of potent drugs under names which the lay user does not know and which in many cases are unknown even to physicians. 65855-41-15 |