Mr. MARTIN. I understand what you mean, Mr. Lanham. I repeat that I know of no decision which holds that the term "necessary truthfully to describe" is the proper language in determining the right of a defendant in defending a suit. I know of no such case, and I do not think that that is the common law, because it is far too restrictive. It is not a question of whether it is necessary to truthfully describe. It is a question of whether it is an ordinary, common, usual descriptive term. That is the common law, as I understand it.

Mr. CARTER (Washington, D. C.). Mr. Chairman, it seems to me that Mr. Martin has overlooked two points. One is that before the mark can be registered, the commissioner must find that it has acquired a secondary meaning. The second point is that there are 5 years in which anybody who is damaged may come in and have a chance to speak.

Mr. LANHAM. May I inquire with reference to your statement there with reference to the 5-year provision, is there not some system in vogue by which men who use or contemplate using trade-marks can be advised of what they can and what they cannot use, so that within the 5 years they could come in and make their claim?

Mr. CARTER. Yes; but, of course, that would not cover the point that Mr. Martin makes. The man who wants to use the descriptive term would not be looking to see what descriptive terms he could

use.

Mr. LANHAM. Not even with reference to his own product?

Mr. CARTER. Well, I mean ordinarily you do not look very much. when you want to describe your product. You just go ahead and do it. But it seems to me that you have those two safeguards. First, the Commissioner will not register a descriptive term unless he finds that it has acquired a secondary meaning; and second, there are 5 years after that registration within which anyone who may think that he might be damaged will have a chance to be heard. The point of the incontestability section is that after a man has gotten registration, has gone through the Commissioner's office and then has had it for 5 years, it ought not to be taken away from him.

Mr. LANHAM. Well, in your opinion, Mr. Carter, the provision in H. R. 102 and Senate 895, which is the original provision with reference to this matter, in your judgment is that the better provision? Is the provision suggested by Mr. Byerly the better provision or the American Bar Association provision better?

Mr. CARTER. I am inclined to agree with Mr. Byerly.

Mr. LANHAM. On the suggested amendment of H. R. 102?
Mr. CARTER. Yes, sir.

Mr. ROGERS. As I understand Mr. Byerly's suggestion, he has inserted the word "commercial," which broadens it somewhat.

Mr. BYERLY. "Commercially necessary" instead of "merely necessary," as in the old draft.

Mr. SCOTT. May I ask whether there is any difference in the application of the three proposals, or of the four proposals now, including Mr. Byerly's, to this situation: A man named Ford, who has nothing to do with the Ford Motor Co., has a used-car service, a used-car shop. He advertises either in these words "Buy a Ford used car" or

"Buy a used car. Ford." Now, they may not necessarily be Ford automobiles. Is there any application, any difference in the application of these three provisions as admissible defenses to the use of those words?

Mr. BYERLY. I think that so far as the use of an individual name goes, as distinguished from descriptive and geographical words, that all the drafts are practically identical. The difference is in descriptive words and in geographical words.

Mr. SCOTT. I wanted to eliminate the descriptive part of it.

Mr. BYERLY. So far as personal names go, I do not see much difference between the American bar draft and ours.

Mr. SCOTT. I do not either.

Mr. BYERLY. May I say one word, Mr. Chairman, in response to what Mr. Martin has said? It seems to me that Mr. Martin's argument, if it is valid, is an argument for refusing to make a secondary meaning mark incontestable, and if the committee should agree with him I should like very much to see them do that, that is to say, in the incontestability section that it does not apply to marks which are primarily geographical, because then we would know exactly what the bill meant, and what I object to most in the language proposed in this bill is that it introduces these provisions as to validity in a section which is defense against a mark which is incontestable, and therefore definitely valid, and it seems to me that is confusing. I do not agree with Mr. Martin that it is a bad thing to do, to make these marks incontestable, but I can see his argument and I think to deal with that, if you accept that argument you should simply knock out incontestability, as to these marks, rather than do it in this backhanded way through the defense section.

Mr. FENNING. Mr. Chairman, may I say a word with respect to what Mr. Martin and Mr. Rogers said about the question of "necessary"?

Mr. Rogers cites two cases, the Cellophane case and the Shredded Wheat case. If you will look at the opinions in those two cases you will find that in each instance the court defined cellophane in terms other than cellophane. The courts defined shredded wheat in terms other than shredded wheat. Those terms were not necessary terms. They were usual terms. They had been used frequently, but they were not the only method of defining that particular device. Now, it seems to me that to say to anyone that he may use only-that he may get an exclusive right to a term and prevent anyone else from using that term, with these two sections included, is going much too far, because, as Mr. Martin suggests, if there are three terms, neither of which are necessary, three men may register them, and the defense will be only when the defendant is using a necessary term. But there is no necessary term. Those three men will cover the entire field together, but no one of them will cover the entire field. Now, the American Bar Association proposal allows a man to use an ordinary, desirable term. Mr. Byerly will give a man only the right to use a term which is necessary as a defense, and it seems to me that that is a very clear distinction of a very clear difference, and that the word "necessary" should be entirely dropped out of the defense provision.

Mr. KARL POHL, New York City. Mr. Chairman and gentlemen, the American Bar Association's revision of the section in question

contemplates only one thing, that the defendant may make use of one of these descriptive or geographical terms or surnames in an incidental manner in describing on a label the contents, or in directions for use, or in an address, only descriptively, the particular name or a descriptive term or geographical term. The important thing is that only to that extent may I make use of that particular term. I may not, under the Bar Association revision, use that term as a trade-mark. Now, that is established common law, and I refer, for instance, to the Dyanshine case, where the court said the defendant may use Dyanshine in the description of his product; he may say truthfully that this polish will dye and shine, but, said the court, he may not use it as a brand name or trade-mark. And that is exactly what he should not be permitted to do, because the moment there are two articles on the market known as Dyanshine or Dye and Shine, then you will have confusion. Now, the American Bar Association provision goes no further than that. The man to have the right to make an incidental, technical, purely descriptive use of the descriptive term will not impinge on the right of the person who has obtained an incontestable right in the particular descriptive term, to use that term solely as a trade-mark, as a brand name, leaving the other man free to use the same term, for instance, his own name, in saying that he, John Brown, is making hats, but he may not call them Brown hats or Stetson hats. In the original bill the defendant, after the plaintiff has obtained an incontestable right, the defendant is invited, practically invited, by this bill, Senate 895, to make use of this descriptive terms as a trademark. It says that "the use by the defendant of the mark charged to be an infringement," and so on.

Mr. LANHAM. Of course, there is some modification of that language suggested by Mr. Byerly.

Mr. POHL. Yes; Mr. Byerly has probably taken care of it.
Mr. MARTIN. No; I do not think so.

Mr. POHL. But I believe that the section as drafted by the American Bar Association is far better. It will give the trade-mark owner absolute and complete control over that name as a trade-mark or brand. It will leave the whole world at large free to use the same name in a wholly incidental and descriptive manner in describing the product.

Mr. ROGERS. It seems to me that the word "merely" is objectionable on account of the fact that it is in the present act and has been very narrowly construed. It should mean "only," as a matter of language, and if we use the word "only" instead of "merely" we will avoid this difficulty.

Mr. LANHAM. Use the word "only" in the amendment suggested by Mr. Byerly?

Mr. ROGERS. Yes.

Mr. BYERLY. No; in the American Bar Association amendment. Mr. FENNING. If you will turn to the committee print, page 30, line 16, cancel the last word "merely" in that line, and then in the next line change to the following: "Descriptive of and used in good faith only to describe to users the goods or services."

Mr. LANHAM. Would that meet all the objections that have been urged to this language?

Mr. MARTIN. It is quite satisfactory to us.

Mr. BYERLY. Will you read that language then?

Mr. FENNING. I will read paragraph 4 as amended in its entirety:

4. That the use by the defendant of the name, term, or device charged to be an infringement is a use other than as a trade-mark 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 who uses his own name in his own business, or of a term or device which is descriptive of and used in good faith only to describe to users the goods or services of the defendant, or of a term or device which is primarily descriptive of their geographic origin.

Mr. BYERLY. It seems to me you are bringing in the validity of the trade-mark there. It seems to me that that is also unnecessarily complicated. I should like to suggest a slight modification of the language I suggested at least, I have been trying to see whether I could modify it to get in the word "necessary.'

Mr. LANHAM. Have you drafted that so you could read it into the record?

Mr. BYERLY. Yes; if you will permit me.

Mr. LANHAM. The amended amendment?

Mr. BYERLY. Yes. I am frank to say that I prefer the first one.
Mr. LANHAM. You prefer the one you are about to read?

Mr. BYERLY. No; the one I read before. This is the way I have it:

That the act of the defendant charged to be an infringement is a fair use of an individual, personal name in his own business, or a fair use of a commonly used term, whose only meaning to users of defendant's goods is truthfully to describe goods or their geographical origin.

That brings in "only" without the complication of "merely."
Mr. LANHAM. What are the reactions to that?

Mr. MARTIN. One objection to it is that it does not use the expression "other than as a trade-mark." It seemed to the committee of the American Bar Association that that was a limitation here which was very helpful. It prevented the use of a descriptive term in a trade-mark sentence, and that is the usual way that an infringer uses these descriptive terms. That is the first thing he does, is to set them up in a trade-mark sense, so that somebody will confuse the origin of the goods, and under the American Bar Association section that cannot be used as a defense. Under Mr. Byerly's proposition that is not mentioned at all, and apparently there is no distinction between using a descriptive term in a trade-mark sense and using it in any other sense. It seems to me that that is a defect.

I want to say, Mr. Chairman, that this section has been debated back and forth for a long, long time.

Mr. LANHAM. I appreciate that.

Mr. MARTIN. And Mr. Byerly and I have debated it many times, and others have debated it, and it is not something of first impression. It has been given a great deal of thought on the part of both of us.

Mr. FENNING. Of course, the answer to the whole thing is that incontestability should be abolished. There should not be incontestability. If you are going to do that you get into trouble.

Mr. MARTIN. I think that should be explained. For the first time in the trade-mark law we are giving a right which is a rather drastic right. We are giving trade-marks which have been registered for 5 years and used for 5 years incontestability. That means that once a man gets such a trade-mark he is not bothered with all these defenses that are set up, that his mark is no good.

Mr. LANHAM. Certainly that time should come for a man with a trade-mark; otherwise he is simply likely to be fomenting litigation, and it seems to me as a layman that if I had a trade-mark at some time or other I would want to be secure in that trade-mark.

Mr. MARTIN. Quite right, Mr. Chairman, but what we have got to look at the public viewpoint. We cannot just look at the trademark owner's viewpoint. Everybody has got a right to the use of the English language and has got a right to assume that nobody is going to take that English language away from him.

Mr. LANHAM. I appreciate that from the standpoint of this amendment, but I think that is a matter of clarifying this amendment and not a matter that goes to the substance of incontestability. Mr. MARTIN. I mention that only to show you the importance of preserving this right, that is, of defending it and limiting it. This is a very important section, I think, and I think it ought to have very careful consideration.

Mr. LANHAM. I appreciate that.

Mr. CARTER. Cannot Mr. Martin's objection be easily met by inserting the language as to use of these trade-marks, in Mr. Byerly's amendment?

Mr. LANHAM. Would that be agreeable?

Mr. BYERLY. I would have no objection to that. I should rather say, "Not used as a trade-mark, designation, brand," or something like that. To my mind that is covered by the words "a fair use." That would not be a fair use, so it is out. But to amplify that by putting that in the language which I have used, I would have no objection to it.

Mr. LANHAM. Then I am just wondering if, during our noon recess, you gentlemen could not get together and perhaps draft that in a way that would meet the wishes of each of you.

Mr. MARTIN. That may be possible. Now, we tried to do that before, and as I understood it, there was little objection to Mr. Fenning's suggestion. I understood that everybody, practically, agreed that that would solve the difference.

Mr. LANHAM. You mean defining the word "merely?"

Mr. MARTIN. Not defining it, but substituting the word "only" instead of "merely." Now, if we include this trade-mark idea, except for two or three words, there is not a great deal of difference between what Mr. Byerly suggests and what we suggest here.

Mr. LANHAM. That was the predicate in my suggestion that you gentlemen could probably agree on that during the noon recess.

Mr. MARTIN. What really happened was that substantially what Mr. Byerly has there was what we started with. That was substantially H. R. 102 and S. 865, and then from that developed the American Bar Association language. Now, Mr. Byerly wants to go back to several months ago.