April 29, 1937, page 87, entitled "The Price They Paid." Should not the present bill have at least a few words of some section regarding either infringement or unfair competition, and what about that new strange creature entitled "Secondary meaning." 3. This bill does not distinguish the classification of goods any more than the present law, insofar as arbitrary words and marks are concerned; but allows : X-Registration of different marks on same goods. Y-Registration of similar marks on different goods. Z-Registration of similar marks on same goods. This can be all accomplished by the same devious methods used under the present statute and does not even involve the question of who is the trade-mark owner. To further complicate matters, there is now to be a supplemental register. The fact that a supplemental register is necessary at all, proves the basic weakness of the original trade-mark law and now you would repeat the original "fickle folly" instead of correcting the fundamentals. It indicates two kinds of trade-marks. The general public is not interested in two kinds of trade-marks. Further, they want a simple trade-mark law, not a complicated one. A merchant either has a trade-mark or he has none. If there are to be two kinds of trade-marks, why not make good ones and bad ones and identify one with a "g" and one with a "b." Again, this violates the United States Constitution on the basis of discrimination alone. 4. This new trade-mark bill does not attempt to include the whole United States so far as trade-mark ownership is concerned, but does attempt to cover the whole United States insofar as interstate commerce is concerned. Here you would deliberately upset the existing precedents established by the United States Supreme Court and would attempt to push the common-law rights of trade-marks used in interstate commerce into the territory where such commerce does not extend or where such trade-marks are not used. Just what does the trade-mark user get by registration of his trade-mark under this proposed bill and what is meant by the definition, "The intent of this act is to regulate commerce within the control of Congress" other than that it is intended to include all interstate commerce. I object very strenuously to the words "effective through the United States." We have heard previous testimony that the common law regulating trade-marks is not good enough protection any longer, at hearings on H. R. 9041 and H. R. 4744. Here we see an attempt to supplant or stretch the common law through a statutory effect throughout the United States to where a trade-mark may not have been used. In trade-marks we are either going to have common-law rights or statutory rights, which is it? If this section is intended to be statutory, it is going to deprive prior sectional trade-mark owners of their property without due process of law in violation of the fourteenth amendment to the United States Constitution. It is therefore unconstitutional. It is going to have a great damaging effect to the general public by continuing the false impression that the holder of a certificate of trade-mark registration in the United States Patent Office is the owner thereof of the trade-mark property rights. It is going to cause great confusion and conflict between the same trade-marks used locally and in different sections of the country. And finally, it will evoke such complexities added to the present uncertainties that Government ownership and distribution of all trademarks will be inevitable and then unfair competition and infringement of trade-marks will really be eliminated, because only one trade-mark will be dished out for one kind of goods. 5. The basis could be provided for clarifying trade-marks by the following few simple suggestions, in the following sequence : A-Amend the United States Constitution to give Congress the power to legislate on trade-marks. B-Enact a Federal law providing for registration creating ownership of trademarks (with a time protection for prior users and coverage all over the United States, its Territories, etc.). C-Provide Government enforcement and protection of such law. D-Under such law, provide registration of one trade-mark for one owner (if possible, for all classes of merchandise) or at least one mark for one class. If such a law is enacted and a deed of trade-mark title ownership is vested in the trade-mark registrant, trade-mark infringements and trade-mark confusion will be eliminated after a period of grace for prior users, and thus, general public protection would be afforded to consumers of trade-marked merchandise as well as trade-mark registrants. 6. Such a bill, as hereinbefore suggested, would provide for eventual coordination of all instruments of good will. It would further provide for the coordination of the sovereign 48 States with the Federal Government (see 9 points hereinbefore listed). 7. It would provide a statutory rights in trade-marks and would eliminate a lot of hairsplitting decisions and confusion in trade as well as bewilderment in court. 8. Such a proposal would provide business with Government protection and would eliminate the burden of costly litigation. I object to the words "from interference of State legislation" in "Construction and definitions" since it is a bold, barefaced attempt to deprive the sovereign 48 States of the power granted to them under article X, Rights of States Under Constitution (may I note this as the famous squeeze play of 1941). Would it not be more in purpose with the intent of Congress if these words were changed to read "by Federal and State legislation," rather than the present wording, since it is the "protection" itself that is desired. It is obvious that State laws enacted. by the sovereign States and used for a great many years should not be wiped out or superseded with a wave of the hand or with a few technical words in this section of the bill well placed. As author and sponsor of some of the so-called State trade-mark legislation, I can assure you that one good Federal trade-mark law establishing trade-mark ownership, as hereinbefore suggested, would obviate and eliminate the necessity for any agitation in this direction (compulsory State registration) with its attendant (48 States) multiplicity of complications. There are a lot of people who never did agree with my views on this subject (though I have a list of over 25,000 trade-mark owners for whom I have effected registration and 1,000 lawyers and law firms who do); and further, some of the more important associations made faces at my previous State proposals, but let me state here for all time that I consider the importance of correcting this subject far greater than personalities (including my own) connected with it, and I, therefore, offer my services, my office, and my organization at any time to anyone or any group interested in improving our trade-mark laws, so that the best results possible may be obtained for the future benefit of trade-mark owners. I believe that the entire general public should be made aware of the fact that this bill, definitely and distinctly, concerns itself with the regulation of trademark use in commerce and does not determine ownership to any greater extent than the present law, and it has been decided that ownership is not determined under the present law, so that businessmen are still confronted with the enigma of use versus ownership. Finally, I do not want to continually reiterate the proposal of a trade-mark amendment to the United States Constitution without suggesting the kind of Federal law to be enacted thereafter, as a solution to our present trade-mark difficulties. Businessmen do not want a highly technical or complicated trade-mark law, but a simple law that provides trade-mark registration and protection. Such law must involve trade-mark ownership, if competition and advertising are to survive in our country. If there is to be as much hocus-pocus attendant to such a new trade-mark law, as attached to present laws, there will be increased uncertainty and layman's confusion as well as a continuation of bewilderment to the lawyers. There should be one simple Federal law providing for— 1. Registration of all trade-marks in use. 2. A deed of title issued by the United States Government to registrants. 3. Registration should create the property right (with protection to the first user); use requiring registration. 4. Coverage all over the United States and its territories. 5. One trade-mark exclusively to one class of merchandise (elimination of similar registrations could be accomplished after the period of grace for first user). 6. Government protection (with consolidation of State trade-mark registration laws). 7. A trade-mark law to include all instruments of goodwill. If this trade-mark amendment, as hereinbefore suggested, cannot be made now, it would be far better to discard this bill entirely and merely amend the present law. It is better to correct present defects than create new inequities, especially with many more uncertainties than exist now. Why not divert our combined efforts to the following: 1. A separate trade-mark department in Government. 2. Amend the present trade-mark law (as best possible). 65855-41-17 3. Focus Government and business attention on the importance of trademarks today. 4. Then offer amendment to the United States Constitution on trade-marks. Respectfully submitted. Re Lanham trade-mark bill. Hon. FRITZ G. LANHAM, House Office Building, Washington, D. C. TRADE-MARK SERVICE CORPORATION, THOMSON & THOMSON, Boston, Mass., November 18, 1941. DEAR CONGRESSMAN LANHAM: I understand that your subcommittee would like to have further expressions of approval or disapproval of section 29 of the committee print dated November 4, 1941, of the Lanham trade-mark bill. I have drafted the following memorandum expressing my disapproval of section 29 and request that this be incorporated in the printed report of the hearing before your subcommittee. I am in favor of immediate passage by the House of Representatives of the Lanham trade-mark bill as it appears in the committee print of Navember 4, 1941, but with the incorporation of the amendments to section 34 (b) (4) as to which there was substantial agreement by those who appeared at the hearings, and the amendments to sections 4 and 45 relating to collective marks which have been suggested by Wallace H. Martin. I believe, however, that section 29 should be entirely eliminated from the bill. My reasons are as follows: Section 29 provides for the so-called deposit plan which formed a part of the series of Vestal trade-mark bills in the Sixty-ninth, Seventieth, and Seventyfirst Congresses. The Vestal bills failed of passage principally because of opposition to the deposit plan. The deposit plan was also incorporated in H. R. 9041 of the Seventy-fifth Congress on which hearings were had by your subcommittee in March of 1938 (note the provisions of secs. 29 to 32, inclusive, of H. R. 9041 which provided for deposit of marks, cancelation of the deposited marks because of abandonment, and the provision that "it shall be unlawful to use any mark in commerce unless and until such mark has been deposited"). The opposition at the hearings in 1938 resulted in the elimination from the Lanham bill of the deposit plan. There was no provision for the deposit of marks in H. R. 4744 and H. R. 6618 of the Seventy-sixth Congress, or in H. R. 102 and H. R. 5461 of the present Congress. If the deposit plan is now put back in the trade-mark bill, it may jeopardize the immediate passage of the bill as considerable opposition is sure to arise. As the result of several years of extensive consideration the Lanham bill, except for the deposit plan, meets with substantially complete approval and should be passed without again raising an old controversial issue as to which there is a serious difference of opinion among those most closely interested in trade-mark legislation. The American Bar Association has not given its approval to any specific legislative provisions covering the deposit plan. Necessarily, any cursory approval in principle of such a plan, such as the action taken at the meeting of the patent section of the American Bar Association in Washington on February 6, 1941, did not take into account the various other safeguard provisions which would have to be incorporated to prevent such a deposit plan being used to the detriment of trade-mark registrants. Note that H. R. 2828 of the Seventy-first Congress provided that "The Commissioner shall not accept for entry any mark already registered or for which an application for registration is pending for the same goods." It would certainly be to the detriment of a trade-mark registrant for an infringing or conflicting mark to be deposited in the search files of the Patent Office since it would encourage others to similarly adopt and deposit other cor flicting marks. H. R. 2828 further provided that marks entered under the provisions of section 5 should be marked "abandoned" or "canceled" at the end of 5 years unless the entrant should file an affidavit that the entered mark was still in use. There must be some provision for removal of abandoned marks from such a file, otherwise it would be of no value but instead would be a serious deterrent to those searching the records for the purpose of adopting a new mark. As further indicative of the fact that it was previously thought that such deposited or entered marks might be misused, H. R. 2828 made it unlawful for any depositor to use the notice "Deposited in the United States Patent Office" or "Entered in the United States Patent Office," etc., under penalty of a fine of not less than $100 or more than $250. All of the above provisions of H. R. 2828, which was passed by the House of Representatives in 1930, are cited as evidence that the deposit plan requires very careful consideration and should be considered, if at all, in a separate bill entirely apart from the very comprehensive Lanham trade-mark bill, as to which an agreement has been reached. Personally I believe that the sentiment at the Indianapolis meeting of the American Bar Association was strongly opposed to the deposit plan and that if the matter were fully considered the deposit plan would be disapproved. If the deposit plan is incorporated in a separate bill, as it should be, this controversial issue can be fully considered during the coming year and action taken thereon at the Detroit meeting of the American Bar Association. My objections to the deposit plan generally are in accord with the views expressed by Wallace H. Martin in his letter to your committee subsequent to the oral hearings. The Lanham bill encourages the registration of all marks used in commerce as to which the users have rights of ownership. The deposit plan would tend to discourage registration, particularly if the depositor is to be given any advantages, such as the refusal of registration to another party on a deposited mark. The Lanham bill provides an incentive for the intrastate user to expand into interstate commerce and register his mark. The deposit plan, in permitting the deposit of marks used in intrastate commerce, would have a contrary effect. The Lanham bill provides for a file of active registered marks by requiring the cancelation of marks no longer in use at the end of 6 years from the date of registration, as provided in section 8 (a). The deposit plan as provided in section 29 would result in a file of marks, many of which were not being used. It would encourage the deposit of marks without any actual use of the marks in an attempt to discourage others from adopting the same marks. The honest trade-mark adopter does not need and would not use the provisions of the deposit plan and would be hindered more than helped by such a plan. The unscrupulous trade-mark adopter, desirous of monopolizing certain marks or families of marks, would use the deposit plan to obtain some claim of right where no real basis for such claim existed. For these and many more reasons the deposit plan should be eliminated from the Lanham bill. Respectfully yours, EARL H. THOMSON. Hon. FRITZ G. LANHAM, HIRAM WALKER & SONS, INC., Detroit, Mich., November 22, 1941. Chairman, Subcommittee on Trade-marks of the Committee on Patents, Washington, D. C. DEAR SIR: Our associate counsel, Mr. C. E. Lancaster, of Messrs. Lancaster, Allwine & Rommel, Washington, D. C., has reported to us on the hearings on your trade-mark bill which were held before the Subcommittee on Trademarks of the House on November 12, 13, and 14, 1911. We should like, at this time, to go on record with your subcommittee as being in favor of the following wording for section 34(b)(4) (commitee print): "SEC. 34(b)" (page 30, committee print) "(4) That the use by the defendant of the name, term, or device charged to be an infringement is a use otherwise than as a trade or service mark, of the defendant's individual name in his own business, or of the individual name of anyone in privity with the defendant, or of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or services of the defendant, or their geographical origin; or" We think the above wording is much to be preferred to that presently contined in the committee print. Mr. Lancaster also reported to us the consideration which was given to section 29, covering the deposit of marks. On this we will say that we are against inclusion of this section in the bill. We feel that this is more properly the subject matter of a separate bill and that if and when it is passed there should be provided in the law itself, rather than in any regulations which the Commissioner of Patents may adopt, a provision for systematic weeding out of obsolete marks. Trusting that the foregoing may receive your favorable consideration, we are Very truly yours, HIRAM WALKER & SONS, INC., Re trade-mark bill, H. R. 5461. Hon. CHARLES KRAMER, WASHINGTON, D. C., November 22, 1941. Chairman, House Committee on Patents, United States Capitol. DEAR SIR: I attended the morning sessions of the hearing on the above bill, held on November 4 and November 12, and regret that I was unable to attend the full hearings. During the time that I was at the hearings I heard no discussion of the bill on its merits. I am opposed to the bill in its entirety. This is one of a series of bills that have been before Congress, commencing with what was known as the Ernst bill in the Sixty-eighth Congress, all sponsored by a few individuals, and each proposing in one way or another to convert a trade-mark registration certificate into a patent right, and each retaining the interference, opposition, and cancelation proceedings of the 1905 act, which determine nothing as to the ownership of a mark, but prevent marks in use from being registered. The present bill provides that the owner of a mark may register. Ownership, in this country, grows out of use, under State law, not by shipping goods bearing the mark along State lines or across State lines, but by use within a State. If A sells X pies in California, and owns the mark X there, and ships his X pies into Nevada and makes his goods known by the X mark in these two States, and then applies for registration, while B is using the same mark on pies in Camden, N. J., and sends his pies across the Delaware River into Pennsylvania, then, unless B fights out an interference with A's application (or perhaps an opposition) A, according to this bill, will acquire the right to prevent B from shipping his pies across the Delaware River, although he owns the mark in New Jersey and Pennsylvania and A would be an infringer if he sold his X pies in either Pennsylvania or New Jersey. This would no doubt increase the litigation in the Patent Office tenfold only to the benefit of the attorneys carrying on the litigation. I beg leave to file herewith copies of three pamphlets' which I have published, bearing on trade-mark registration, since this series of bills came before Congress. These are entitled "The Common Law of Trade-Marks," "The' Ernst Bill Fundamentally Wrong," and "A Plea for a Simplified Trade-Mark Registration Law." I have been advised that some one representing the American Patent Law Association has reported to your committee that the Association has approved the bill, H. R. 5461, here under consideration, after a referendum vote. I want to deny that the association has approved the bill. The American Patent Law Association did send the bill out to its members for a referendum vote. The articles of association of the American Patent Law Association provide that at least one-fourth of the membership in this country must vote to commit the association one way or the other with respect to a bill. The membership is approximately 660 and I am advised by the secretary that only 92 voted. Hence the association has not committed itself one way or another on this bill and no one has a right to report otherwise. Article XXII of the articles of association relates to the subject of referendum by mail and section 3 of that article reads as follows: "The ballots received shall be counted by the secretary, unless otherwise directed by the board of managers, and the majority vote of the ballots received (provided properly marked ballots are received from at least one fourth of the total number of members residing within the continental limits of the United States) shall be the action of the association on the question submitted. When the ballot 1 Retained in committee files. |