preventing confusion and not with any intent or purpose to restrict the scope of the section. It was felt that a certification mark could be owned by an association or a collectivity, and in that event the certification mark would be an association mark or a collective mark, as the case might be. At the hearings it was argued that in view of the international conventions it would be well to refer specifically to collective marks. Furthermore, it was argued that the language in the definition of certification marks (committee reprint, p. 44, lines 22-25) was too restricted. I think these criticisms should be met. I suggest the following amendments: 1. In the committee reprint, section 4, page 6, amend the title in line 22 by inserting, following the word "certification", the words "and collective." 2. Section 4, line 25, following the part of the word "cation", insert "and collective." 3. Section 45, page 44, strike lines 22 to 25, inclusive, and insert in place thereof the following: "The term 'certification mark' or the term 'collective mark' means a mark used by the registrant or, if the mark is not registered, by the owner in connection with goods or services to certify or indicate membership in an association or other organization, regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristic of such goods or service or that the work or labor on the goods or service was performed by members of a union or other organization." It is believed that the term "association mark" should not be included in section 4, since clearly an association can secure a trade-mark under the common law and under the definition of a "person" who may apply for registration as stated above. The language in the proposed amendment to the definition of a certification mark or a collective mark as quoted above shows clearly that an association may secure a certification mark. Furthermore, under the proposed amendment a certification mark may indicate membership in an association such as a chamber of commerce or may indicate that the goods in connection with which the mark is used are made by members of a union or other organization. This language would clearly take care of union labels. It is quite likely that someone can suggest an improvement to the above language, but I think it is essential that in this legislation the definition of a collective mark be made clear and definite in order to prevent the possibility of confusion and even deception of the public. As to section 29, it is my belief that this section should not be incorporated in the law for the following reasons: 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. A system of deposit of marks for a nominal cost of $2 would undoubtedly be used by many people who, if the deposit section were not enacted, would register on the principal register. 2. Under the provision of section 29, no rights whatever woud 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. A trade-mark lawyer, I am sure, would hesitate to advise his client to deposit his mark if he appreciated that the deposit gave no rights and made possible the theft of the mark by an unscrupulous competitor. 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. The accumulation of "dead wood" would make it impractical for anyone to try to use the file as an accurate search of active valid marks. 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. It is my opinion that nothing should be permitted to interfere with the incentive to register a mark on the principal or supplemental register provided for in H. R. 5461 as amended by the American Bar Association in its Indianapolis meeting and that the enactment of section 29 in the committee reprint would merely detract from that incentive. I do not think that section 29 should become a part of the statute. Respecfully yours, WALLACE H. MARTIN. 65855-41- -16 Hon. FRITZ G. LANHAM, House Office Building, Washington, D. C. NIMS, VERDI & MARTIN, New York, November 18, 1941. DEAR CONGRESSMAN LANHAM: I want to take this opportunity of congratulating you on the way you conducted the trade-mark hearings. Your efficient and courteous method of handling the hearings impressed me. I have already sent to each member of the Subcommittee on Trade-Marks a letter with reference to sections 29 and 4. I am constrained to write you again in connection with the trade-mark bill by reason of the news reports of the Supreme Court decisions handed down yesterday. According to the New York Times of this morning, clipping from which is enclosed, Justice Frankfurter, writing for the majority of the Court, pointed out that a 148-year-old law "expresses the desire of Congress to avoid friction between the Federal Government and the States resulting from the intrusion of Federal authority into the orderly functioning of a State's judicial progress." It is true, of course, that there is no direct analogy between the situation considered by the Supreme Court and the language in the Lanham bill stating that the intent of the law, among other things, is "to protect registered marks used in such commerce from interference by State or Territorial legislation." I expressed the opinion at the hearings that the inclusion of this language might cause friction between the States and the Federal Government and since it was wholly unnecessary it should be excluded. I think Justice Frankfurter's decision bears out this position. When your committee has acted, I shall appreciate very much receiving a copy of the committee action. I have been asked to serve a second year as chairman of the trade-mark committe of the American Bar Association and I am obligated to keep the members advised as to the progress of the bill. May I ask for your cooperation? Sincerely yours, WALLACE H. MARTIN. NATIONAL RETAIL DRY GOODS ASSOCIATION COMMITTEE ON PATENTS, WASHINGTON, D. C., October 31, 1941. House of Representatives, Washington, D. C. GENTLEMEN: The members of the National Retail Dry Goods Association, representing an annual volume of business of approximately $5,000,000,000, a substantial portion of which is trade-marked merchandise, are very much concerned with respect to section 41 of H. R. 102, which provides a criminal penalty for "knowingly" introducing or receiving in commerce any counterfeit of "any mark upon the principal register." Retailers have no control whatsoever over trade-marks affixed to merchandise by their resources and are naturally in no position to question the genuineness of any trade-marks affixed to such merchandise, nor have they any means of determining rival claims with respect to infringement or counterfeiting. 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. As to the second paragraph of section 41, which provides a penalty of not less than $100 to be assessed against any person who shall "introduce" in commerce goods bearing a legend falsely indicating that the mark thereof is registered in the United States Patent Office, may we submit that no retailer should have the burden placed upon him to ascertain whether or not trade-marks affixed to merchandise received by him have actually been registered in the United States Patent Office. This paragraph should be amended if it remains in the law, and it probably does properly belong therein, to read as follows: "Any person who shall affix to any goods a mark bearing a legend falsely indicating that the mark thereof is registered in the United States Patent Office and after having affixed such legend, introduces the goods in commerce, shall be guilty of a misdemeanor and shall be subject to a fine of not less than $100." This amendment will at least prevent any action against a retailer or other innocent party who may introduce merchandise into commerce bearing the false legend but who had absolutely no part in affixing the legend to the merchandise and who in the ordinary course of business would have no knowledge whatsoever of the truth or falsity of the legend. We believe that there may be some justification for a criminal penalty to be exercised against anyone deliberately counterfeiting a trade-mark for the purpose of misleading the consuming public or unfairly depriving the owner of his legitimate rights, but we believe that section 41, if it is to remain in the bill, should be amended to so provide. This could be done very simply by amending the present language of section 41 and have it read as follows: "Knowingly to counterfeit any mark upon the principal register and knowingly to affix such mark to any goods with the knowledge that such goods may be introduced into commerce, or having affixed such counterfeit mark to any goods to thereafter introduce or transport such counterfeit marks in commerce, shall be a misdemeanor punishable by a fine not exceeding $1,000 or imprisonment not exceeding 6 months, or both." There is, of course, no objection on our part to criminal penalty where there is a willful and deliberate marking of merchandise with a counterfeit label for the purpose of deceiving the public. The difficulty is that in many cases one manufacturer will claim that he has the right to a trade-mark and another manufacturer will claim that his right is paramount by prior use or for one reason or another, or that a label is not a direct imitation or counterfeit. Thousands of retailers or wholesalers may, in good faith, purchase the merchandise and find themselves loaded with such merchandise which they have purchased without knowledge of conflicting claims. Under section 41 the retailer or wholesaler would not be able to sell such merchandise without the threat of criminal penalty. There are various grounds upon which the rights of trade-marks can be brought into controversy between manufacturers, which are often quite plausible and difficult for any distributor to determine. The responsibility should not be upon the distributor, yet, if the claim is made that a mark is a counterfeit, the distributor, who may have no way of determining the facts, will have the threat of criminal penalty hanging over him and he may be forced to withdraw merchandise from sale which properly should continue to be sold. A legitimate manufacturer's business may likewise be injured by threats of unscrupulous competitors who might intimidate distributors through the threat of criminal penalty in a controversy over a trade-mark which might finally be determined not to be a counterfeit. It is respectfully requested that section 41 be amended in such a manner as to remove all jeopardy from the retail distributor. We do not believe that the word "knowingly" is sufficient for this purpose as even a notice from a claimant who has no right to a trade-mark whatsoever might be held to charge the retailer with knowledge. Respectfully submitted. THE NATIONAL RETAIL DRY GOODS ASSOCIATION, ATLANTA, GA., November 20, 1941. Hon. CHARLES KRAMER, Hon. VANCE PLAUCHÉ, Hon. ARTHUR G. KLEIN, Hon. HUGH D. SCOTT, JR., Hon. WILLIAM H. STEVENSON, House Office Building, Washington, D. C. GENTLEMEN: It is the purpose of this letter to disapprove section 29 of the committee reprint of the Lanham trade-mark bill, which deals with the proposal to create a deposit file in the Patent Office. This disapproval is based on my feeling that it would tend to destroy the incentive to register; it would provide a search bureau for dishonest persons who could consult the depository for the purpose of stealing marks which might be territorially limited; and there would be no method of determining whether marks so deposited were valid or invalid, active or inactive. It seems to me that one of the chief purposes of this act is to give an incentive to register and to keep only active marks on the register. Section 29 tends to nullify that purpose. Since I served last year as a member of the American Bar Association committee on trade-marks, and have been asked to serve again this year, I should appreciate very much your advising me of the action of your committee as soon as any action shall have been taken. Yours very truly, Hon. FRITZ LANHAM, DAPHNE ROBERT. WASHINGTON, D. C., November 19, 1941. United States Capitol, Washington, D. C. DEAR MR. LANHAM: With respect to the "deposit" plan of the Lanham bill, may I call your attention to the fact that at the hearings I read into the record a change in wording of section 29? The language I suggested as a substitute included a limitation identical with that approved by the house of delegates of the American Bar Association, which limits deposits to those marks "used only in intrastate commerce, and those marks used in commerce not otherwise registrable." In other words, if a user of a mark can register it under any other section of the bill, then he cannot enter it as a "deposit." You will see that any argument to the contrary is without foundation in fact. And may I add that, so far as I can see, this is the only way provided by the Lanham bill whereby the small businessman, too poor at the start to get his mark in interstate business, can get his mark in the search records of the Patent Office. Thanking you, and with best wishes, I am, THOMAS E. ROBERTSON, GLEASON WORKS, Hon. CHARLES KRAMER, Chairman, Committee on Patents, Rochester, N. Y., November 3, 1941. House of Representatives, Washington, D. C. MY DEAR CONGRESSMAN KRAMER: Replying to your letter of October 21, our Rochester patent group has held several meetings with reference to proposed trade-mark legislation. In general our group approves of the purposes of the Lanham trade-mark bill as revised April 28, 1941, by the coordination committee consisting of representatives of the American Bar Association, National Association of Manufacturers, etc., and reintroduced as H. R. 5461. There are several parts of this bill, however, which our group questions and which we feel deserve further consideration by your committee. They are as follows: 1. Section 8 (a) requires the registrant to file an affidavit of use within 6 years, otherwise the registration shall be canceled. 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 affidavit 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 in advertence, accident, or mistake and without intent to abandon the mark. 2. Section 12 (b) states that a trade-mark application may be prosecuted until "the applicant fails for a period of 6 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. 3. Section 15 provides that on filing proof of continuous use, the right to "use" of a mark shall be incontestable after 5 years except to the extent which such use infringes a valid right acquired under the law of any State or Territory by continuous use of a mark or trade name extending "from a date prior to the date of publication" under the act of the mark for which incontestability is claimed. The question is raised as to whether this would not invite State trade-mark registration in order to prevent the use of marks registered in the Patent Office becoming incontestable. The question also is raised as to whether "the date of publication" in this section should not be changed to "date of first use" or at least to "date of filing under the act of the application for registry of the mark for which incontestability is claimed." It takes several months to obtain registration of a mark and in that period the mark may have become so widely used that some one else may use or register under a State law with the aim of preventing United States registration of the mark from becoming incontestable. If the State right had to be acquired prior to first use or prior to the filing of the United States application, there would probably be less litigation and less chance of fraud. 4. 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. 5. 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. Moreover, under present law, a right in a trade name can be obtained if the name is written in a distinctive manner. Is this section intended to eliminate this right as regards future registrations? 6. In addition, individual members of our group question as to whether the benefits of the act should not be awarded registrants under prior acts without the necessity of a new registration and a new registration fee; whether the phrases "for good cause shown" and "within a reasonable time" in section 13 are definite enough; whether the phrase "goods of the applicant" in section 16 is definite enough, and whether a certificate of incontestability should be issued after registration and 5 years use, and whether common-law rights should be sacrificed for the purpose of securing a universal Patent Office registration system. These views are called to your attention because you state that the hearings are to be held on the general subject of trade-marks and not on any particular bill. We do not wish to testify at the hearings, but want to thank you for bringing them to our attention. Sincerely yours, ROCHESTER PATENT GROUP, By B. E. SHLESINGER, Chairman. Hon. FRITZ G. LANHAM, NEW YORK, N. Y., November 18, 1941. Chairman, Subcommittee on Trade-Marks, House of Representatives, Washington, D. C. MY DEAR MR. LANHAM: In accordance with your request at the hearings last week, I am writing a brief comment on section 29 of the committee print. This section provides for deposit in the Patent Office of marks which are not registered. There is no question but that a file containing all marks used anywhere in the United States is desirable for search purposes but I question whether that end would be accomplished by this section. Such a file or register will not be so necessary after enactment of the Lanham bill as heretofore, because under this bill, substantially every mark, whether used as a trade-mark, service mark, or certification mark, can be registered under some provision of the bill, except for those marks that are used solely within the boundaries of one State. |