In that case, you would come down to fair use and use it not as a trade-mark, but as a descriptive term. You can readily think of a case where the second manufacturer made those words extremely conspicuous and was unfair about it, but I think if, in the course of his description, he said that this collodion I am selling you causes a new skin, while the wound is healing, he would be within his rights.

Mr. SCOTT. Then he could write "n-e-w- s-k-i-n," new skin in describing his product; could he use "Nu-Skin"?

Mr. BYERLY. No; I do not think that he could because that would be intrinsically evidence of unfairness.

Mr. SCOTT. The original trade-mark of "Nu-Skin" wouldn't have been abandoned at all.

Mr. BYERLY. Your question raised two questions to my mind.

That was the first one. Whether the mark has been abandoned, that is something we would have to know more facts about, but my guess would be that most people know that Nu-Skin is a brand of something that you put on your skin, and though they don't know what it is a brand for, they still think it is a brand, and I think you see a "Nu-Skin collodion," or something like that on it. That is something you would have to go into, and you will find that trade-mark owners who are well advised, usually put a descriptive term on their label and endeavor to avoid the very thing that would lose their trade-mark or abandon it, that is, trying to make the trade-mark the substitute or only word to replace the descriptive word, and that is why, under this section, on abandonment, we said that if any course of conduct, including omissions, any course of conduct of the trade-mark owner, including the omissions, causes the trade-mark to lose its significance of origin.

I think you will find in almost all those cases that has been either a deliberate intention, or rather extreme negligence on the part of the owner, which has allowed that what ought to be merely secondary significance of his trade-mark to creep in and be the primary significance, to creep in and crowd out the other.

If he has been careless enough, or has deliberately done that, his mark is gone.

Under those circumstances, I rather think that the compromise language which is now instruction 32 (b) is quite sufficient to take care of the situation.

I am frank to say that, perhaps, because I am a little partial to the original language, which I used, and because it seems to me that it might eliminate doubts in some people's minds, that you could, if you wanted to-I mean. It seems to me that it would be possible to add to this language that we have here now, if I may turn to that for a minute.

Mr. LANHAM. Page 31?

Mr. BYERLY. Yes.

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 the goods to users, or the services of the defendant, or their geographic origin

If we added to that

Or of the only term by which the goods of the defendant can be described to customers

that would specifically meet the objection that has been taken to that section.

It does not seem to me necessary but I think it a relatively harmless thing to do, that is, the cases mentioned are simply those where there was only one term and the man had to use it, but that, you see, will overlap always.

If there is only one term, then the trade-mark has been abandoned under the other section.

Mr. LANHAM. So you suggest before the semicolon on line 14, after the word "origin," inserting a comma and those words you indicate, be inserted?

Mr. BYERLY. Yes; I suggest that as a matter of relieving certain people's feelings, although my feeling is that the section as it stands, coupled with the abandoned section, takes care of the situation. Mr. LANHAM. Are there further questions to ask Mr. Byerly? (No response.)

Mr. LANHAM. Thank you very much.

We have a number of distinguished gentlemen, also a very distinguished lady with us this morning, who have been before our committee many times; they are all very eminent men and one, who has been very, very helpful in our consideration of trade-mark measures, is Mr. Wallace Martin, of New York.

Mr. Martin would like to be heard at this time.

Mr. BYERLY. I would like to say that I have no connection with anyone directly interested in this case. I became interested in the bill when I was on a committee of the New York Patent Law Association, dealing with trade-marks and the only one I represented was the association, and now I don't represent them.

I am not on the committee.
(Discussion off the record.)

STATEMENT OF WALLACE H. MARTIN

Mr. MARTIN. I am a member of the firm of Nims, Verdi & Martin. I am appearing here in my individual capacity. I happen to be chairman of the trade-mark committee of the patent trade-mark and copyright section of the American Bar Association, but I do not appear here in behalf of that committee.

My firm, for many years, from time to time, has represented the Coca Cola Co. in various litigations. At the present time I do not believe there is any matter in the office for the Coca Cola Co., but it is possible, and I hope there will be some in the future.

I may say that I have worked on this proposed legislation for many years and never have I been consulted, or have I consulted any client, so far as this bill is concerned. My whole work has been for bettering the bill from the viewpoint of trade-mark owners and the public generally. I would like to take up the suggestions made by Mr. Vanderbilt in the order in which he advanced them.

His first suggestion was an amendment to section 13, at the end thereof. I think everyone is in agreement with Mr. Vanderbilt that the intent and purpose of the act is to permit opposition proceedings to be filed only in connection with applications under the new act and not in connection with registrations under the present 1905 act.

I see no harm in adding Mr. Vanderbilt's amendment, but I think it is wholly unnecessary because opposition is predicated upon publication under section 12 (a), and if that is the only basis for an opposition, then publication under 12 (c) would not be ground for opposition.

For that reason, it seems to me unnecessary to add this, but I, again, say that certainly that is the intent of the act, and I have no opposition to adding that language if it will make it clear.

The second suggestion for an amendment by Mr. Vanderbilt has to do with an amendment to section 33 by adding a sixth subdivision. I am opposed to Mr. Vanderbilt's suggested amendment. There are numerous registrations on the register in the Patent Office at the present time which, in fact, are invalid because they have been abandoned. They may not have been used for many, many years, and no one pays any attention to them.

Under Mr. Vanderbilt's proposed amendment, even though that registration had long since been abandoned and its use discontinued, nevertheless that registration would become a good defense to incontestability.

It doesn't seem to me that a registration under the present act, the 1905 act, should be the proper basis for a defense. The question is whether the mark has been used, whether it is being used, and if it was used prior to the registration under the new act this present bill provides a good defense.

The language, as it appears at the present time is—this appears in subsection (b) 5, of section 33:

That the mark whose use by the defendant is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by the defendant, or those in privity with him from a date prior to the application of the registered mark under subsection (a) or (c) of section 12 of this act: Provided, however, That this defense shall apply only for the area in which such continuous prior use is proved.

In other words, the ground for a defense should be a prior use of the registered mark, rather than whether there is an old registration. under the 1905 act on the record.

I think we should hold in mind in discussing these amendments, the purpose of this new legislation. In my opinion, the principal purpose is to provide as complete a register of trade-marks as it is possible to provide.

Heretofore, there has been no obligation to register and very little incentive because the only advantage gained by registration was a procedural advantage in the Federal courts.

The result has been that there are literally thousands of trade-marks, well-known trade-marks, which are not registered in Washington.

In drafting this act, every incentive that could be devised has been included in this act to get everybody to register their mark, so that when anybody wants to choose a mark, he can go to Washington and look in the records and see what marks are registered and then he can be governed accordingly.

Under the present act, he won't find all of them registered there, but this act has been intended to give an incentive-every possible incentive that could be given has been given-so that everybody will register a mark.

In fact, I think under this act, the public should be taught that they have a duty to register their mark in Washington, so that anybody who wants to use a mark can feel reasonably sure that there is a register that is substantially complete and they can feel reasonably sure if they look in Washington, that there will be no marks outstanding that will conflict with their marks.

If that attitude can be taken toward this act, I think we will approach it with a viewpoint that will cause us to improve these incentives or make them more forceful rather than to try to cut them down, because everybody who has practiced trade-mark law knows how difficult it is to advise a client with reference to the validity of any new proposed mark.

What are these incentives that have been provided? Well, there are a number of them and they have been mentioned many times, but I only want to mention them in connection with these provisions. When a mark is published under this act, under the new proposed act, of course, anyone can appear and oppose the proposed mark, so that the first chance he has to object to the mark is by an opposition proceeding and the mark is published in the Official Gazette and either he or the one who is taking care of his trade-mark matters should receive notice of that because the Official Gazette of the Patent Office is widely distributed.

He has a chance to oppose. If he doesn't oppose, still again, he has a chance to come in and cancel that mark and he has 5 years in which to cancel it. If he doesn't cancel in 5 years, even then his common law rights are not destroyed. He can still have the use of his mark, provided he began to use it before the registrant applied to register the mark. He still can use his mark in the territory where he has been using it.

The incentive is given to the little man, and to the big man and everyone to register, because, if he doesn't register his marks and somebody else comes along and registers a confusingly similar mark, the first user is restricted to this little territory where he has been using it. He will never be able to spread all over the country. There is the incentive. If a man wants to be able to spread all over the country and use his mark to enlarge his business, he must register it, otherwise someone may come along and register the same mark, not knowing about his mark, and then he would be restricted to his own territory.

It seems to us, who have worked on this bill, that that is fair treatment. We are trying to make everybody understand that it is to the good of the public and trade-mark users generally to have a place where they go and see what marks are registered, and we are trying to give everybody an incentive to register their marks there so it will be possible to go to this place and find the marks which are used.

Use, it seems to me, is the proper defense, and not registration because the registration under the 1905 act or the 1881 act may not mean that the mark is being used and mere registration, in my opinion, should not be a good defense to incontestability, and for that reason, I am opposed to the suggested amendment.

Mr. LANHAM. Isn't it true that the mark may never have been used?

Mr. MARTIN. Quite right. That often happens, except the first use to get the registration.

The next proposed amendment by Mr. Vanderbilt has to do with subsection 4 of subsection (b) of section 33 appearing on page 31.

I think Mr. Byerly presented the case with reference to this proposed amendment very clearly, and I agree with what he said, except his proposed amendment.

I don't agree with his proposed amendment, but so far as his analysis of the situation is concerned, I do agree with him.

I would like, in extending his remarks, to dwell a little bit more in detail on some of these cases which have been mentioned. For example, take the Aspirin case. As I understand Mr. Vanderbilt's proposition, it is that had the Aspirin case been decided when H. R. 82 has been enacted, the decision would have been different. I disagree with him and I would like to explain why I disagree with him. The facts of the Aspirin case, as I remember them, or at least the controlling facts were briefly these: The owner of the mark "Aspirin" permitted a number of manufacturering chemists to make the product and sell it as aspirin, without mentioning the name of the owner of the mark.

For example, you had Parke Davis aspirin; you had this aspirin and that aspirin; but never once was the owner of the mark's name mentioned in connection with the use of the word "aspirin."

That continued over a period of years, with the result that anybody buying aspirin had no idea that aspirin was a trade-mark of any one concern, but they had every reason to believe that aspirin was the name of a product used by various manufacturing chemists in putting out the product.

As a result of that situation, the court held that so far as the public was concerned, the word "aspirin” had lost its significance as a trade-mark and was merely the name of the product, but the court said that so far as the manufacturing chemists were concerned, aspirin still meant a trade-mark and it still meant the product of a particular concern and held the mark good as to the manufacturing chemists.

Applying the present act to that situation, what do we find? Well, I don't know whether it was an act of commission or an act of omission, but certainly the owner of the mark did not treat that trade-mark as it should have been treated in permitting the manufacturing chemists to use the word "aspirin" as the name of the article without ever stating at any time that it was a trade-mark of a certain concern. I would say it was an act of commission. It might be construed as an act of omission. They failed to do what they should have done to protect that mark and in my opinion, under H. R. 82, the owner of the mark, not having done what he should have done to protect his mark, the mark had become generic and it was abandoned.

In order to understand this definition of abandonment, we must point out, as it has been pointed out in numerous cases under the law, as it previously has been construed, that actual abandonment requires proof of intent to abandon.

In the Cellophane case, the courts held that cellophane had never been abandoned as a trade-mark because the owner of the mark had never intended to abandon and since they couldn't show intent, there was no actual abandonment; however, the court did not discuss constructive abandonment and went off on another ground and held that it was generic.