for damages, or in a suit in equity for an injunction. This act was amended by the act of August 14, 1876 (8), which added a punishment by fine and imprisonment for the fraudulent use, sale and counterfeiting of trade-marks registered in pursuance of such act.

§ 34. First act held unconstitutional. In the TradeMark Cases (9), the entire act was held unconstitutional on the ground that Congress could not, under its constitutional power to protect authors and inventors, legislate on the subject of trade-marks; that the act was not in its terms confined to marks used in interstate commerce, or commerce with foreign nations, or with the Indian tribes, and therefore could not be supported under the clause conferring on Congress power to regulate such commerce; and that there was nothing else in the Constitution which could be construed as conferring on Congress power to pass such an act as the one under consideration.

§ 35. Act of 1881.-Present act. A few years later another act (10) was passed providing for registration in the Patent Office of trade-marks used in commerce with foreign nations, or with the Indian tribes, and giving remedies by civil actions in law and equity for infringements of such marks. The provisions of this act are superseded by the more comprehensive provisions of the

(9)

100 U. S. 82.

(10) Act of Mar. 3, 1881, c. 138 (21 Stat. 502); amended by act of Aug. 5, 1882, c. 393 (22 Stat. 298); R. S. Secs. 4937, 4947.

present act (11), which will be considered in succeeding paragraphs of this article.

The Trade-Mark Act in general provides for the registration in the Patent Office of trade-marks used in commerce with foreign nations, or among the several states, or with the Indian tribes, and confers upon United States courts jurisdiction in civil actions at law for damages and actions in equity for injunctions and damages, against any person wrongfully using any such registered mark in commerce among the several states, or with a foreign nation, or with the Indian tribes. The act, therefore, purports to be, and is, a regulation of such commerce.

§ 36. Who may register? Any owner of a trade-mark who is domiciled within the territory of the United States, or has a manufacturing establishment within the territory of the United States, or resides in or is located in any foreign country which by treaty, convention, or law affords similar privileges to the citizens of the United States, may, subject to the provisions of the act, register his mark in the Patent Office.

§ 37. What marks may be registered? Any mark used in commerce as above noted, by which the goods of the owner of the mark may be distinguished from other goods of the same class, may be registered, unless such trademark:

(11) Act of Feb. 20, 1905, c. 592 (33 Stat. 724); amended by act of May 4, 1906, c. 2081 (34 Stat. 168); and by act of March 2, 1907, c. 2573 (34 Stat. 1251); R. S. Secs. 4937-4947. A pamphlet containing the Act of Feb. 20, 1905, and the amendatory acts cited, together with the rules of the Patent Office relating to the registration of trade marks, is printed by the Patent Office for gratuitous distribution.

1. Consists of or comprises immoral or scandalous matter.

2. Consists of or comprises the flag or coat of arms or other insignia of the United States, or any simulation thereof, or of any state, or municipality, or of any foreign nation, or of any design or picture that has been, or may hereafter be, adopted by any fraternal society as its emblem.

3. Is identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties.

4. So nearly resembles a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.

5. Consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual.

6. Consists merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods.

7. Is merely a geographical name or term.

8. Is the portrait of a living individual (except by consent of such individual, evidenced by an instrument in writing).

Any mark used by the applicant or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations, or among the several states,

or with Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from which he derived title for ten years next preceding the twentieth day of February, 1905, may be registered.

In determining what marks are, and what marks are not registrable under that part of the act which is set forth in substance above, probably controversies have arisen oftenest over clauses 4, 6, and 7, above. A reference to a few decisions will illustrate the considerations applicable in such cases.

§ 38. What is such near resemblance as is meant by the act? The words in the following groups have been held to be so nearly similar as to preclude registration of one of them, under the act, where one of the others had been previously registered:

"Oliveine" and "Olivant"; "Optal" and "Optine"; "Liveraid" or "Liverine," and "Liveroid"; "Camille Royal Combination" and "La Camille"; "Old Jay" and "Blue Jay"; "Club Cocktails" and "Chancellor Club"; "Kronpol," "Cronpine," or "Cronpelene" and "Cronpaline."

But the following marks have been held dissimilar for the purpose of registering one after a previous registration of the other: "Sozodont" and "Zodenta"; "Mayfield" and "Mayfair"; "Cuticura" and "Cuticle."

§ 39. What is descriptive? It is well established that a mark which is descriptive of the qualities, ingredients, or characteristics of the article to which it is applied cannot constitute a valid trade-mark at common law, and cannot be registered in the Patent Office, for the reason

that all persons who are entitled to produce and vend similar articles are entitled to describe them, and to employ any appropriate words for that purpose (12). A contrary rule would enable one party to appropriate certain descriptive words or phrases, and another party others, until a large part of the English language had been monopolized, and a later entrant into the field might have difficulty in finding words enough left to describe his goods.

Accordingly the following words have been held descriptive in the connection with which they were used: "Air-cell," for a fire-proofing material; "Apple and Honey," for a medicine; "Best," for flour; "Cantripum," for clothes; "Klean-well," for massage sponges; "Neverstick," for lubricants; "Vogue," for boots and shoes; "Sterling," for ale, on the ground that it denotes genuineness, purity, and superior quality; and "Standard," for machines, whether the machines are, in fact, of superior design or not; in other words, it makes no difference whether the word is correctly descriptive, or falsely descriptive.

But the following words have been held valid trademarks: "Magnetic-Balm" for a medicinal compound; and "Electro-Silicon" for a polishing compound.

§ 40. Descriptive symbols. The following symbols have been held descriptive and incapable of appropriation: The picture of a bag having the open end thereof held closed by a tie, as a mark for bags; and the picture of a corn plaster, as a trade-mark for corn plasters, al

(12) Bennett v. McKinley, 65 Fed. 505.