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It is therefore recommended that the clause on page 28, lines 16 to 20, beginning with "except that under" and ending with "or to deceive purchasers" should be eliminated and the following substituted therefor:

"except that no such action shall be maintainable under subdivision b of this section until there is a judicial determination of infringement in an action against the owner of the challenged mark or any person selling or distributing the product bearing such mark, and until notice of such determination shall have been given to the manufacturers of such labels, signs, prints, packages, wrappers, or receptacles or the publisher of such advertisements."

VI. DAMAGES AND PROFITS

Section 36 of the committee print has to do with the recovery of damages, profits, and costs. In view of the language of section 35 and the fact that sections 35 and 36 are derived in the main from the present act, it seems clear that the normal principles of equity in respect of allowance of and defenses to an accounting of profits and the recovery of damages are not affected by this bill.

In order to effectuate the intentions of the draftsmen and in the interests of clarity, it is recommended that the words "according to the principles of equity" be inserted in the first sentence of section 36 at line 3 of page 33 after the words "he shall be entitled."

VII. SERVICE MARKS

There appears to have been tacked upon the definition of service marks in section 46 at page 44, lines 16 to 21 of the committee print, a provision of the widest import which appears to confer monopoly rights in any mark, symbol, title, designation, slogan, character names, or other distinctive features of radio or other advertising used in commerce. The breadth of the definition makes it meaningless. If the purpose of the provision is to define what may be adopted as a service mark, it would appear that the same language used in the definition of "trade-mark" might be repeated here. If the provision is intended to confer monopoly rights in all advertising matter, it goes beyond the law of trade-marks, patents, and copyrights.

If it is desired to confer special rights on original advertising material, a much more comprehensive and carefully worked out piece of legislation is necessary. Under the bill as now drafted, service marks under section 3 are registrable subject to the provisions relating to the registration of trade-marks, so far as they are applicable. In other words, the whole matter is left at large for the Patent Office and courts to work out, in their discretion, the conditions governing the registration of advertising material. I accordingly recommend that lines 16 to 21 be eliminated from page 44 of the committee draft and the following definition of service marks be substituted therefor:

"The term 'service mark' includes any word, name, symbol, or device, or any combination thereof, adopted and used in the sale or advertising of services to identify such services and to distinguish them from the services of others."

If it be desired to protect the titles and musical signatures of radio programs, a more carefully phrased definition is necessary than that now contained in the bill. Respectfully submitted.

MILTON HANDLER.

Hon. CHARLES KRAMER,

Chairman, Committee on Patents,

WOOD, AREY, HERRON & EVANS,
Cincinnati, November 13, 1941.

United States House of Representatives, Washington, D. C.

DEAR SIR: As an attorney specializing very largely in the law of trade-marks I would like to take the opportunity to express an opinion on a particular subject covered by H. R. 5461 which I understand is now receiving the attention of your committee.

The general subject in which I am particularly interested is that of descriptive or semidescriptive trade-marks and the particular section with with I am concerned is section 33 (b) 4. As this section was originally written it included language which I do not have before me in the exact form but which provided, in substance, that only a word or phrase which is the only normal and natural

way to refer to an article shall be considered a descriptive trade-mark in the sense that the defense provided by this subsection is applicable.

In lieu of the language to which I have just referred the bill now uses the words "merely descriptive of." To my mind the phrasing of the section in this way is a serious mistake, first of all because it adds nothing to the law as it now stands but simply confuses it by the use of a new form of expression which will undoubtedly require extensive judicial determination.

In the second place, I feel very strongly that a greater measure of protection should be afforded descriptive and semidescriptive trade-marks. At the present time a substantial majority of the valuable and important trade-marks are at least semidescriptive and many important marks are purely descriptive. Granting that from a very abstract point of view the average business concern adopting a trade-mark should select something purely arbitrary, the fact is well established that most business concerns do not view the matter in this light and much prefer a mark which is at least partly descriptive. Human nature being what it is, this state of affairs will undoubtedly continue.

Any lawyer having any experience at all in trade-mark matters realizes perfectly that descriptive trade-marks are not receiving the protection to which they are entitled. In my opinion the bill, as originally prepared, would have provided this protection, but it does not do so in its present form.

Very truly yours,

TRUMAN A. HERRON.

THE W. H. KISTLER STATIONERY CO.,
Denver, Colo., November 10, 1941.

Hon. CHARLES KRAMER,

Chairman, Committee on Patents,

House of Representatives, Washington, D. C.

DEAR CONGRESSMAN: Thank you exceedingly for your letter of November 6. In checking this matter with the local employing printers' group, I find they have already heard of the action taken by Mr. Brostoff and concur in this opinion.

I appreciate your taking the time to personally write me about this matter.
Very truly yours,

THE W. H. KISTLER STATIONERY Co.,
ERLE O. KISTLER.

Hon. CHARLES KRAMER,

Chairman, Committee on Patents,

THE W. H. KISTLER STATIONERY Co.,

Denver, Colo., November 3, 1941.

House of Representatives, Washington, D. C.

DEAR CONGRESSMAN: I understand there is a bill, H. R. 5461, designated as the Lanham trade-mark bill, which has, in its present form, a provision making printers liable with the manufacturer or merchant for infringement of trademarks.

If passed in its present form, we as printers would have to verify the fact that the customer had the right to reproduce such trade-mark or insignia. It is obvious that this is not in the normal province of the printer and would also, obviously, put the printer to abnormal expense and in some cases, impossible expense, to check legally the necessary sources.

I hope you will agree with me that a printer should not be put in a position of watchdog in this case and that when this bill comes before your committee you will use your efforts to see that it is so amended as to strike out this obnoxious provision.

Very truly yours,

THE W. H. KISTLER STATIONERY CO.,
ERLE O. KISTLER, President.

Hon. FRITZ G. LANHAM,

LANCASTER, ALLWINE & ROMMEL, Washington, D. C., November 25, 1941.

Chairman, Subcommittee on Trade-Marks of the Committee on Patents,

Washington, D. C.

MY DEAR CONGRESSMAN: I attended the hearings held November 12, 13, and 14, 1941, in connection with the proposed trade-mark bill and was gratified to note the large attendance and the very courteous manner in which you and the other committee members conducted this lengthy consideration of the proposed bill. The firm, of which I am a member, represents many owners of trade-marks (including at least one also a member of the National Association of Manufacturers).

I reported the substance of the hearings to associate counsel, Mr. Arthur H. Stuart, of Detroit, Mich.,' and understand he wrote you November 22, 1941, in favor of changes in the wording of section 34 (b) (4) (page 30, committee print), and in the omission of section 29 (page 24, committee print, title III-Deposit of of marks), believing this should be more properly the subject matter of a separate bill. I concur with Mr. Stuart on this subject.

I, too, am of the opinion that the bill should definitely provide for the registration of "association marks" and "collective marks" in section 4 (page 6, committee print), as indicated by Mr. Chauncey P. Carter during the hearing. While I understand from the hearing that it was assumed the term "certification mark" would include these I subscribe to the suggestion, which I believe was made by Mr. Savage of the National Association of Manufacturers, that if the section 4, above referred to, does not contain the words quoted above, then the definition of "certification mark" (page 44, committee print, lines 22-25), be reworded substantially as follows:

"The term 'certification mark' includes 'association marks' and 'collective marks' and means a mark indicating that the goods or service for which it is used are signified by the owner or registrant as to regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristic, or that the one using the mark is a member of an association, labor union or other group." Thanking you for your consideration, I remain

Very truly yours,

C. EVERETT LANCASTER.

MUNN, LIDDY, GLACCUM & KANE,
New York, November 22, 1941.

Hon. FRITZ G. LANHAM,

House Office Building, Washington, D. C.

DEAR MR. LANHAM: At the hearings held by your committee in Washington last week you suggested that a letter be sent to the committee expressing approval or disapproval of section 29 of the committee reprint of the Lanham trade-mark bill, which section deals with the proposal to create a deposit file in the Patent Office.

In my opinion, section 29 should not be incorporated in the law, since it seems to me that the inclusion of section 29 in the present bill would tend to defeat the very purpose of this legislation; that is, to give the owner of a trade-mark an incentive to register. In this connection, I am in accord with the views expressed in Mr. Wallace Martin's letter of November 17, 1941, to members of your committee.

I am also in accord with Mr. Martin's views with respect to section 4, having to do with certification marks as expressed in the above-mentioned letter to the committee. I believe that section 4 should be revised, as suggested by Mr. Martin. In closing, I wish to make clear that the views I have expressed in this letter are not necessarily those of the committees of which I happen to be chairman or in which I hold membership, but are my own. My views above expressed with respect to section 29 and section 4 were reached after careful consideration. With every good wish and kind personal regards, I am

Sincerely,

SYLVESTER J. LIDDY.

1 Resident attorney, Hiram Walker & Sons, Inc.

Hon. FRITZ G. LANHAM,

MUNN, LIDDY, GLACCUM & KANE,
New York, December 3, 1941.

House Office Building, Washington, D. C.

MY DEAR MR. LANHAM: At the recent hearings on H. R. 5461, you suggested that a memorandum be filed with your committee expressing approval or disapproval of section 29 of the committee print of the bill, which proposes a deposit file of trade-marks for search purposes.

At a recent meeting of the committee on trade-marks and unfair competition of the Association of the Bar of the City of New York, section 29 was discussed and it was the opinion of this committee that section 29 should be eliminated. Many reasons were advanced for the exclusion of section 29, but the principal reason was that section 29 would tend to defeat the primary purpose of the bill, which is to give trade-mark owners an incentive to register their marks. Respectfully submitted.

SYLVESTER J. LIDDY,

Chairman, Committee on Trade-marks and Unfair Competition of the
Association of the Bar of the City of New York.

NIMS & VERDI,

Hon. FRITZ G. LANHAM,

House Office Building, Washington, D. v.

New York, August 14, 1941.

DEAR CONGRESSMAN LANHAM: I am taking the privilege of sending you a copy of the manuscript which I have prepared for publication in the September American Bar Association Journal. It is expected that this manuscript, together with other manuscripts, will be published at the same time, so that attention will be called to your new trade-mark bill in advance of the meeting of the American Bar Association meeting at Indianapolis, beginning September 29.

At a recent meeting of the trade-mark committee of the American Bar Association, approval was given to the revised trade-mark bill in principle. A few minor amendments were suggested. These amendments will be discussed at the Indianapolis meeting. The enclosed manuscript will give you my position on the

bill.

I have heard from some source-I do not know where that you plan to hold short hearings on the new bill. I hope that you will hold the hearings following the meeting of the American Bar Association, September 29-October 4. By that time, we expect that practically all of the controversial issues will be ironed out and that we will be able to present a united front to you. With kind regards, I am,

Sincerely yours,

WALLACE H. MARTIN.

THE NEW TRADE-MARK BILL, H. R. 5461

(By Wallace H. Martin 1)

On July 31, 1941, Congressman Lanham introduced a revised trade-mark bill, H. R. 5461. With the possible exception of the so-called incontestability feature (sec. 15), the revised bill adopts in principle the major amendments approved this year by the association. The revised bill is based on the common law of trademarks. It preserves the association of trade-marks and business goodwill, which earlier trade-mark bills would have destroyed. It gives an added value to registered marks and consequently incentive to register. It more securely protects the public against deception and trade-mark owners against infringements. H. R. 5461 is believed to be fundamentally sound and entitled to the support of the association. It represents many months' work on the part of numerous trademark lawyers. It is felt that every reasonable criticism of this bill can be made by proper amendment without disturbing the fundamentals of the bill. The

1 Chairman of trade-mark committee of patent, trade-mark, and copyright section, American Bar Association.

trade-mark committee is considering several suggested amendments to be submitted at the fall meeting of the association.

The trade-mark committee has heretofore felt that any provision which purported to confer incontestable rights was dangerous primarily because it was coupled with the objectionable provision that a trade-mark could be transferred apart from the goodwill of the business. Since this objectionable provision has been eliminated from the revised bill, there seems to be no valid reason why section 15 should not now be accepted, provided proper precautions are taken to preserve prior rights and prevent misuses. Sections 15 and 33 (b) restrict the right of incontestability. These sections contain a number of exceptions to the so-called incontestable rights, which are believed to give adequate protection against injustices.

The revised bill provides that registration shall be constructive notice of the registrant's claim of ownership (sec. 22). This provision appeared in earlier drafts of the bill. It has been approved by the association. There seems to have been no objection to this section, yet the criticism of section 15 is bottomed on it. In effect it deprives a person of the right to claim innocence if he began to use his mark subsequent to the registration of an infringed mark. It is based on the theory that public interest requires one before selecting a mark to take the precaution of looking at the marks registered in the Patent Office. This requirement is believed to be reasonable and necessary for the future development of trade-mark law in this country. If the precaution of searching the Patent Office is taken before a mark is adopted, possible conflict with section 15 would seem to be avoided.

Constructive criticism of the bill is invited.

NIMS, VERDI & MARTIN,
New York, November 17, 1941.

Hon. CHARLES KRAMER,
Hon. FRITZ G. LANHAM,
Hon. VANCE PLAUCHÉ,
Hon. ARTHUR G. KLEIN,
Hon. HUGH D. SCOTT, Jr.,

Hon. WILLIAM H. STEVENSON,

House Office Building, Washington, D. C.

DEAR SIRS: At the hearings on trade-mark legislation held by your committee in Washington last week Mr. Lanham suggested that a letter be sent to the committee expressing approval or disapproval of section 29 of the committee reprint of the Lanham trade-mark bill, which section deals with the proposal to create a deposit file in the Patent Office. This letter is in response to that request.

I desire first, however, briefly to discuss section 4, having to do with certification marks. That section, it seems to me, received insufficient consideration in view of its importance. Section 4 of the committee reprint is identical with section 4 of H. R. 5461, with the exception that in the committee reprint the words "collective" and "association" have been deleted and at the end of the next to the last sentence in the section the following exception has been added: "except when used so as to represent falsely that the owner thereof makes or sells the goods or performs the services on or in connection with which such mark is used."

So far as I know, there has been no objection to the inclusion of the abovequoted exception. Its purpose was to prevent anyone from misusing a certification mark. This type of mark under the terms of the bill may be registered to indicate any one of numerous characteristics. Heretofore the best-known type of mark has been the trade-mark. It may very well be that some will attempt to use the certification mark in a way that will represent it falsely as a trademaik. The purpose of the above-quoted language is to deprive anyone who attempts so to use a certification mark of the protection provided in the bill. It is my considered opinion that the above-quoted language should be included.

The trade-mark committee of the American Bar Association eliminated the words "collective" and "association" from section 4 because of the feeling on the part of the members of the committee that a collective mark or an association mark may very well be a service mark or a trade-mark. An association is expressly included under the definition of a "person" who is privileged to apply for registration, and the definition seems sufficiently broad to permit a collectivity to apply for registration of any one of the three types of marks. The elimination of the words "collective" and "association" was done solely for the purpose of

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