TRADE-M Ꭲ Ꭱ Ꭺ Ꭰ Ꭼ - Ꮇ Ꭺ Ꭱ Ꮶ Ꮪ A BILL TO PROTECT TRADE-MARKS USED IN COMMERCE, TO TRADE-MARKS HOUSE OF REPRESENTATIVES, The committee met at 10 o'clock a. m., Hon. Albert H. Vestal (chairman) presiding. The CHAIRMAN. The committee will come to order. If there is no objection, we will proceed, in the absence of a quorum, with the regular order of business before the committee this morning—i. e., H. R. 6248, the trade-mark bill. (The bill under consideration reads as follows:) [H. R. 6248, Sixty-ninth Congress, first session] A BILL To protect trade-marks used in commerce, to authorize the registration of such trade-marks, and for other purposes Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, PROCEEDINGS TO OBTAIN REGISTRATION SECTION 1. That the owner of a trade-mark in use in commerce within the control of Congress may register such trade-mark A. By filing in the Patent Office (a) A written application addressed to the commissioner, signed and verified by the applicant, before any officer mentioned in section 15 (b), stating the applicant's name, citizenship, domicile, residence and business address, upon what goods the trade-mark is used, the duration of such use, haw the right was acquired and, if by succession or assignment, from whom, and upon information and belief that the applicant is entitled to the exclusive use of the trade-mark in the United States, and that the applicant is using it in commerce. A description of the trade-mark may be included if desired by the applicant or required by the commissioner; (b) A drawing of the trade-mark; (c) Such number of specimens or facsimiles of the trade-mark as actually used as may be required by the commissioner; B. By paying into the Patent Office the sum of $10; and C. By complying with such rules or regulations not inconsistent with law as may be prescribed by the commissioner. Whoever purposes to adopt a trade-mark for use in commerce may apply to register such trade-mark, paying a fee of $10. The application shall be in such form as the commissioner shall determine, complying as nearly as practicable with the requirements of this section. The application shall be examined and may be published for opposition in the same manner as other applications under this section, and if the trade-mark is found registrable, the commissioner shall notify the applicant who shall then have six months within which to file an application without additional fee in the form provided by paragraph (a) of this section, with proof satisfactory to the commissioner, of use in commerce of the trade-mark and specimens or facsimiles thereof; whereupon the commissioner may register such trade-mark. SEC. 2. No mark by which the goods to which it is applied by the applicant may be distinguished as to source or origin shall be refused registration as a trade-mark on account of its nature unless it (a) Consists of or comprises immoral or scandalous matter. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. (c) Consists of or comprises the portrait or signature of a living individual unless by his written consent, or the portrait or signature of any deceased President of the United States during the life of his widow, if any, unless by her written consent. (d) Consists of or comprises a mark which so resembles a trade-mark previously used by another as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive purchasers as to the source or origin. When such previously used trade-mark is applied to like or analogous goods or goods associated in use it shall constitute prima facie grounds for refusing registration. (e) Consists of a mark which when applied to the goods of the applicant has merely a descriptive or geographical meaning or is merely a surname. Rejection on any of the foregoing grounds shall be subject to rebuttal by evidence of relevant facts. (f) Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing herein shall prevent the registration of any mark used as a trade-mark by the applicant in commerce, which, in accordance with the principles of common law, has acquired a secondary meaning distinguishing the applicant's goods. Substantially exclusive use as a trademark for five years preceding application shall be prima facie evidence of secondary meaning. (g) Registrations of a mark except under paragraph (f) of this section shall be prima facie evidence of ownership as of the date the application was filed. Registration of a mark by virtue of paragraph (f) shall be prima facie evidence of the right as of the date the application was filed to prevent others from using the mark in a manner likely to cause confusion or mistake or to deceive purchasers as to the source or origin of the goods. SEC. 3. In addition to the registration provided in sections 1 and 2 of this act, the commissioner shall keep a register of all marks communicated to him by the international bureaus provided for by the convention for the protection of trade-marks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, in connection with which the fee of $50 gold for the international registration established by article 2 of that convention has been paid, which communication and register shall show a facsimile of the mark; the name and residence of the registrant; the number, date, and place of the first registration of the mark in the country in which the owner has his main place of business or where he manufactures the product on which the mark is used, including the date on which application for such registration was filed and the term of such registration; a list of goods to which the mark is applied as shown by such registration and such other data as may be required by the commissioner concerning the mark. Owners of marks so registered, being domiciled in any country which is a party to said convention, shall enjoy, while the registration remains in force, all the rights and benefits conferred by said convention. -66 SEC. 4. (a) Registration, under the provisions of this or prior acts, shall from the date when this act takes effect, be constructive notice as of the date of registration to all persons of the rights claimed therein. It shall be the duty of the registrant to accompany a registered trade-mark with the words Registered in U. S. Patent Office" or "Reg. U. S. Pat. Off.," or by the letter "R" in a circle, thus R; and in any suit for infringement under this act by a registrant failing so to mark, no profits and no damages shall be recovered except on proof that the defendant had actual notice or knowledge of the trade-mark and continued to infringe the same after such notice or knowledge and no such profits or damages shall accrue except after such notice. } (b) It shall be unlawful for any person to accompany any unregistered trade-mark with the words "Registered in U. S. Patent Office," or "Reg. U. S. Pat. Off.," or "Registered Trade-Mark," or with the letter "R" in a circle, or with any other letters, words, or abbreviations of like import; or to use any such words or abbreviations on any label or in any catalogue, circular, or advertising matter. SEC. 5. (a) Any mark (including therein a trade-mark symbol, label, package, configuration of goods, name, word, or phrase) used in commerce and identifying any merchandise or business may be deposited in the Patent Office by the user filing one or more copies, facsimiles, or representations thereof, as the commissioner may direct, on a form to be furnished by the commissioner, and by paying into the Patent Office a fee of $2. Any person using, in commerce, any such mark, which shall not have been registered and for which no application for registration has been filed, who shall fail so to deposit it within one year of the first use thereof in commerce, or within one year after this act takes effect, shall, on applying to register in any form under this act, pay, as a fee for such registration, in lieu of any other fees prescribed in this act, the sum of $30. There shall be excepted from the foregoing the trade names embraced in article 8 of the convention mentioned in section 6 hereof, but such trade names may be deposited under this section at the option of the user thereof. Any user of a mark solely within a State may at his option deposit the same under this section. (b) The commissioner shall cause to be assembled for search purposes in such form as the commissioner may determine, all marks— (1) Now registered and which may hereafter be registered ; (2) For which applications for registration are pending; (3) Which may be deposited under this section; and (4) Any other marks in actual use which the commissioner may direct. Such collection of marks shall be open to public inspection at such times as the commissioner may prescribe. (c) Whenever any person shall in good faith deposit according to paragraph (a) of this section any mark which is not expressly excluded by paragraphs (a), (b), and (c) of section 2, with a verified showing that the depositor is rightfully using such mark to distinguish the depositor's goods. in commerce, and is using or preparing to use it, in foreign commerce, and that no other person has an equal right to the use of such mark, and that the depositor requires a certificate of such deposit in order to procure protection of the mark in foreign countries, and shall pay an additional fee of $2, the commissioner shall forthwith issue a certificate of such deposit which certificate shall be evidence of the fact and date of deposit and that the depositor claims rights in said mark. Such certificate shall be given without examination as to the depositor's right under paragraphs (d), (e), or (f) of section 2; and shall not have the effect of a registration under the other sections of this act. Depositors of marks under this section shall have the same and no other rights and remedies in commerce concerning said marks which the common law affords. The commissioner shall keep a copy of each such certificate of deposit, which shall be open to inspection; and shall publish a notice thereof in the Official Gazette. (d) Any certificate issued under this section may be revoked by the commissioner if he is satisfied that the depositor's use of the mark is infringing or otherwise wrongful, or his claim to the mark is unfounded. And upon the verified objection of any person aggrieved, the commissioner may summarily suspend such certificate until the validity of the objection may be determined, but such action shall be without prejudice to the rights of either party, and may be conditioned upon the objector commencing legal proceedings against the depositor within a time to be fixed by the commissioner. SEC. 6. (a) An application for registration of a trade-mark, filed in this country by any person who has previously regularly filed an application for registration of the same trade-mark in a foreign country wherein he is domiciled, and which is his first application in any country, if such country by treaty, convention, or law, affords similar privileges to citizens of the Unlited States, shall be accorded the same force and effect as would be accorded to the same application if filed in this country on the date on which the application was first filed in such foreign country, if such application is filed in this country within four months from the date on which the application was first filed in such foreign country. Applications under this section shall conform as nearly as practicable to the requirements of section 1, but need not allege use in commerce. (b) Every owner of a trade-mark, being domiciled in any country which is a party to the international convention entered into at Paris, March 20. |