The Lanham bill provides for registration of many classes of marks which could not be registered hetretofore so that within a few years the file of registered marks in the Patent Office should be much more complete and reliable than it is at the present time.

I beileve that there are not a great many marks, that is, that the percentage of all marks is very few, which are used entirely within one State. Substantially, every user of a mark, whether a manufacturer, merchant, or association, knows that he can secure registration and protection of his trade-mark, service mark, or certification mark, by making a bona fide use of it in interstate commerce, however small that use may be. And I believe that most of them do this After passage of the Lanham bill, there will be very few marks that are not registrable, and as to those, I think it doubtful if many users would pay a deposit fee of $2 and get no protection.

One of the purposes of the Lanham bill is to make registration so attractive and necessary that all owners of marks will appreciate its advantages and register their marks in the Patent Office. The Patent Office files of registered marks will therefore, be much more certain for search purposes than they are at present. Section 29 does not contain any provision for keeping the register alive, nor is it certain as to whether or not the Patent Office will refuse registrations in view of this file.

If such a file is established, it seems that it should provide that depositors of marks should be notified when applications are filed for similar marks so that they may assert their rights. I do not think that an application should be refused registration merely because someone has filed a statement that he is using a mark intrastate.

Such a deposit system could well be used to exact tribute from bona fide users of trade-marks. Such a file would be an inducement to unscrupulous persons to deposit all kinds of marks of which there was little or no actual use, with the sole purpose of later disposing of their alleged claim to the mark to one who has bona fide adopted the mark in trade.

In any event, this section is so far reaching in its effect and introduces such a new principle in our trade-mark law that it should have much fuller discussion than can be given to it by correspondence or than was given to it before your committee last week.

I believe it should be eliminated from the Lanham bill and if its proponents consider it would be of sufficient importance, its subject matter with proper limitations and definitions could form the subject matter of another bill.

Very truly yours,

HENRY J. SAVAGE.

NEW YORK. N. Y., November 19, 1941.

Hon. FRITZ G. LANHAM,

Chairman, Subcommittee on Trade-marks,

House of Representatives, Washington, D. C.

MY DEAR MR. LANHAM: I am taking the liberty of writing you in respect to the last clause of section 19, in lines 1 to 3, on page 20 of the committee print. As you will recall, Professor Handler protested against this sentence at the hearings last week on the ground that it, in effect, changed the rules during the progress of the game. I think that that is not the case, and even if it were the case it is proper for Congress to change the rules respecting the application of statutes at any time, and the courts have so held many times.

However, the rules are not necessarily changed because the provisions of this act will apply to pending applications only at the election of the applicant.

Section 48 (a), page 49, provides that the applicant may amend his application to bring it under the provisions of the act, but if he does not make such amendments then the prosecution of the application shall be proceeded with in accordance with the acts under which the application is filed. I think a consideration of section 48 (a) removes Professor Handler's objection to section 19.

Very truly yours,

HENRY J. SAVAGE.

NEW YORK, N. Y., November 19, 1941.

Hon. FRITZ G. LANHAM,
Chairman, Subcommittee on Trade-marks,

House of Representatives, Washington, D. C.

MY DEAR MR. LANHAM: There is one section of the committee print, namely, section 31, relating to classification of trade-marks, that was not considered at the meeting last week. I wanted to speak about this section and ask Commissioner Frazer to state how he would apply it, but there was not time to do so, and I did not want to appropriate the time when other sections seemed to be of greater importance.

However, I think some consideration should be given to the probable effects of this section.

This section provides for classification of merchandise for convenience of Patent Office administration, and it also states that it shall not limit or extend an applicant's rights. Now, I cannot see how a classification may be useful to the Patent Office, unless it be used to limit an applicant's rights. Unless there be some clarification of this section, I am fearful that it will be used by the Commissioner as a basis for granting two or more registrations to different users of the same or similar marks when the goods on which they use the mark fall in two different classes. Should the Commissioner establish arbitrary classes of merchandise as he has under the act of 1905, and then grant registrations for the same mark to different persons in different classes, we will be right back where we were under the 1905 act where "merchandise of the same descriptive properties" was a controlling feature in granting registrations. Section 2 (d) of the Lanham bill makes confusion or mistake or deceit of purchasers the controlling feature in granting registrations.

Now, if section 31, or classification of trade-marks may be used by the Commissioner to modify section 2 (d), I think it will raise a very serious question. If it is possible to do so, I think it would be well to secure a statement from Commissioner Frazer as to how this section will be administered by the Patent Office.

I am sending copies of my four letters to Mr. Rogers so that he will be informed as to my views.

Very truly yours,

HENRY J. Savage.

NEW YORK, N. Y., November 19, 1941.

Hon. FRITZ G. LANHAM,

Chairman, Subcommittee on Trade-marks,

House of Representatives, Washington, D. C.

MY DEAR MR. LANHAM: Although you did not ask for comments on any section of the bill other than section 29, I am taking the liberty of giving you some further comments on section 4, pages 6 and 7.

Your notes undoubtedly indicate that some of those present at the meeting last week wished to restore both collective marks and association marks to this section. In view of the discussion, I think it might be well to restore collective marks to this section, but I am quite convinced that association marks should not be included in this section.

I state this because association marks such as the marks of fruit-growers associations, tobacco-growers associations, and lumbermen's associations, etc., usually or frequently are trade-marks or service marks and should be registered under section 2 or section 3. If association marks are limited to section 4, as they would be by including them in this section, it undoubtedly would preclude them from being registered as either trade-marks or service marks, although I believe most of them fall in those two groups rather than under certification marks.

I believe that this could be made clearer and better by limiting section 4 to collective marks and certification marks and then amending the definition of certification marks in section 46, page 44, lines 22 to 25, so as to take care of the situation. I believe an amendment to this definition was suggested at the meeting by Mr. Fenning, and I think if his amendment were adopted, there would be no question but that all marks used by associations or "collectivities" would be registerable in their proper classes.

In any event, I believe that the matter inserted in lines 8 to 10, page 7, of section 4, should remain. This will prevent anyone who uses a certification or collective mark from asserting any trade-mark rights under it. In other words.

it would prevent a manufacturer of hats, for example, who runs a union shop and is, therefore, entitled to attach the union label to his merchandise, from claiming any trade-mark rights in the union label. I think such a clause as this is essential to protect associations in their marks.

Very truly yours,

HENRY J. SAVAGE.

NEW YORK, N. Y., November 19, 1941.

Hon. FRITZ G. LANHAM,

Chairman, Subcommittee on Trade-Marks,

House of Representatives, Washington, D. C.

MY DEAR MR. LANHAM: I hope I am not burdening you too much but I am enclosing a memorandum which sets forth the advantages as I see them of the Lanham bill over the acts of 1905 and 1920. I prepared this list of advantages before the hearings last week but did not hand it in.

It has occurred to me that this might be helpful to you in setting forth the advantages and improvements which the Lanham bill makes in our trade-mark law.

If it does not appear to be useful, no harm is done and you can consign it to the waste-paper basket.

Very truly yours,

HENRY J. SAVAGE.

MEMORANDUM OF CHANGES IN TRADE-MARK LAW UNDER H. R. 5461

Lanham bill, H. R. 5461, makes many changes in our trade-mark law as contained in the acts of 1905 and 1920, as amended, and I believe that these changes are improvements in the trade-mark law and should be approved.

I have noted these changes or improvements in the order in which they occur in H. R. 5461 and will identify them by reference to the sections where they are found.

1. The bill provides for concurrent registrations in sections 1, 2 (d), and 18. I think that concurrent registrations will do away with many inequities which arose under the act of 1905. Under the 1905 act, there could be but one registration for the same or similar mark upon merchandise of the same class. And this, regardless of limited territory in which the first user used his mark and regardless of whether he ever extended his use beyond a few States in his immediate vicinity. Under concurrent registrations two or more users of the same mark in different parts of the country may secure registrations. This enables the second user of the mark to sue in Federal courts and to have all of the advantages of a registrant. 2. Section 2 (d) makes confusion in origin or deception of purchasers one of the reasons for refusing registration rather than the descriptive properties of the goods on which the mark is used. This broadens the protection given a registrant and is a big improvement. However, this clause must be read in connection with section 30 which authorizes the Commissioner to establish classifications and which may be a limitation upon section 2 (d). This will be discussed more fully in connection with section 30.

3. Section 2 (d) provides for registration of marks which have become distinctive of the applicant's goods. This is a big improvement over the 1905 act. 4. The bill drops the provision which occurred in the 1905 act under which the name or principal part of the name of a corporation could not be registered as a trade-mark. Under this provision of the 1905 act, many corporations filed copies of their charters in the Patent Office and thereby prevented the registration of many valuable trade-marks. Under the Lanham bill this cannot be done. 5. Section 4 provides for the registration of certification marks and there is no question but that this is desirable.

6. Section 5 provides for use of a registered mark by related companies without affecting the right of the owner of the mark or of the parent company.

7. Section 6 provides for disclaimers of unregisterable matter without affecting the registrant's common-law rights therein. This is a big improvement over the 1905 act wherein a disclaimer has been construed to be an abandonment of the disclaimed matter.

8. Section 7 (b) makes the certificate of registration prima-facie evidence of its validity.

9. Section 7 (d) permits surrender of a registration or its amendment. This was not possible under the 1905 act.

10. Section 7 (g) permits a registrant to correct his registration where the mistake was made in good faith. This is an improvement over the 1905 act under which a registrant had to secure a new registration, even if he made such a mistake as stating that the corporation was incorporated under the laws of New Jersey when, in fact, it was a corporation of some other state. Under section 7 (g) this can be corrected by a certificate of correction.

11. Section 8 (a) by requiring the filing of a certificate of continued use during the sixth year of the registration, will do much toward removing dead registrations from the records.

12. Section 8 (a) and (b) which authorizes the cancelation of marks at the end of 6 years will not only keep the present register alive but will remove much of the deadwood from the 1905 and 1920 registers.

13. Section 10 liberalizes assignments and makes it now possible to assign a trade-mark with only that part of the business to which it appertains.

14. Section 12 (b) limits to 6 months the time within which an applicant may reply to an action by the Patent Office. Under the 1905 act there was no limit.

15. Under section 12 (c) registrations under the acts of 1881 and 1905 may obtain the benefits of the present bill.

16. Under section 13 the time within which oppositions may be filed may be extended beyond 30 days upon a proper showing. This is an improvement over the 1905 act wherein the limit of 30 days could not be extended in any avent. 17. Section 14, by limiting cancelations to the 5-year period, is a big improvement over the 1905 act under which cancelation proceedings could be instituted at any time.

18. Under section 15 the registrant's right to use his mark becomes incontestable after 5 years except in cases where the mark is involved in litigation at the end of the period or for fraud or abandonment as provided in section 33 (b). 19. Under section 16, interferences are limited to marks that have not become incontestable.

20. Under section 19 the Patent Office may apply equitable principles in trademark cases. Heretofore the Patent Office had no discretion and could only apply the provisions of the statutes in the strictest sense.

21. Section 21 makes section 4915 applicable to all trade-mark cases.

22. Under section 22 the certificate of registration is notice of the registrant's claim of ownership.

23. Sections 23 to 25, which cover the supplemental register, take the place of the act of 1920 and clarify many of its provisions which have always been in doubt. If we are to have a supplemental register, sections 23 to 25 are a big improvement over the act of 1920.

24. Section 26 limits supplemental registrations to 20 years and makes them renewable. Under the 1920 act, a registration was perpetual.

25. Sections 21 and 26 make cases arising under the supplemental register appealable to the Court of Customs and Patent Appeals. Heretofore, all cases arising under the 1920 act became final with the decision of the Commissioner of Patents. These sections give an applicant or registrant on the supplemental register an additional remedy.

26. Under section 27, mark on the supplemental register may later be registered on the principal register. This is an improvement over the 1920 act and the 1905 act wherein an owner who once registered his mark on the 1920 register was forever precluded from registering it under the 1905 act.

27. Section 29 both modifies and broadens the form of notice of registration and to that extent, is an improvement.

28. Section 30 provides for a classification of goods and services for the convenience of the Patent Office. This seems to me to be a modification of section 2 (d) and may throw us right back into the "merchandise of the same descriptive properties" which has always been a bugbear in the act of 1905. Unless the classification of goods is to be used by the Patent Office as a limitation upon a registrant's rights, it cannot serve any useful purpose. If the Commissioner should provide 50 classes of merchandise as he has under the act of 1905, a search under the Lanham bill would involve a search through all 50 classes which would increase the work of the Patent Office fiftyfold. At the present time, a search through only one class is necessary. I think this section merits some further consideration unless the work of the Patent Office is to be greatly multiplied or the rights of the trade-mark owners limited.

29. Section 32 defines and liberalizes the rights and remedies of a trade-mark registrant and is an improvement over the rights and remedies given under the 1905 act.

30. Section 33 (b) makes the certificate of registration prima-facie evidence of the registrant's exclusive right to use his mark. This is a distinct benefit to registrants and will throw a heavy burden upon an infringer.

31. Section 34 broadens the injunctive relief to which a registrant is entitled in case infringement is proven.

32. Section 34 requires clerks in Federal courts to give notice to the Commis sioner of all suits and decisions in trade-mark cases and requires the Commis sioner to endorse these notices in the file wrapper of the registrations involved. 33. Section 35 liberalizes and makes easier the recovery of profits, damages, and costs in case of infringement.

34. Section 37 provides that a court having jurisdiction of the registrant may order the registration to be canceled in a proper case. The courts cannot do this now and even though a court holds a 1905 registration to be invalid, a separate proceeding must be instituted in the Patent Office to secure its cancelation.

35. Section 38 provides a penalty for a false or fraudulent registration.

36. Sections 42 and 43 (b) broaden and clarify the laws relating to the importation of goods bearing infringing marks.

37. Section 43 (a) makes it punishable to falsely designate the origin of merchandise.

38. Section 34 enacts into law the provisions of treaties and liberalizes registration of foreign marks owned in countries adhering to the conventions or that are parties to treaties with the United States.

39. Under the definition at the top of page 43, it is now possible to register slogans, titles, and distinctive features of radio and advertisements, as service marks. Under the present acts, such slogans and features could not be registered. 40. In section 43, page 43, line 5, the word "other" should be stricken out. H. J. S.

NOVEMBER 3, 1941.

Hon. FRITZ G. LANHAM,

WASHINGTON, D. C., November 17, 1941.

House of Representatives, Washington, D. C.

DEAR MR. LANHAM: As a patentee and small manufacturer, I want to object to H. R. 5461 and suggest an amendment: Section 2 (f), page 5, line 25, after (d) insert "(e)".

As the bill now reads, a large corporation could take a descriptive, significant word that had been used in the trade or art for 60 years in a small way, make substantially exclusive and continuous use thereof as a mark for 5 years, and acquire a monopoly. For example, International Business Machines is the only concern now making electric typewriters. They use on these machines the words "Electric Writing Machine." After 5 years they could acquire a monopoly of those descriptive words.

The word "Stenotype," meaning printed shorthand, has been in use by the writers of textbooks on the subject for over 60 years. A few years ago the makers of a particular shorthand-writing machine decided to appropriate the word as a distinctive mark for their machine. Under present law they have no monopoly. Under H. R. 5461, they would have, and no one could market a Smith stenotype, a Remington stenotype, an Underwood stenotype, or any shorthand-writing machine embodying the word "Stenotype" in its name.

Yours very truly,

HOWARD B. SMITH.

WM. WRIGLEY, JR., CO, Chicago, Ill., November 27, 1941.

In re H. R. 5461.

Hon. FRITZ G. LANHAM,

United States, Representative,

House of Representatives, Washington, D. C.

DEAR REPRESENTATIVE LANHAM: At the recent hearing of your committee held in the House Office Building on the Lanham trade-mark bill, I objected to the insertion of section 29, title 3, "Deposit of marks," which was inserted in the committee print.