to deposit a further fee of $15, making $30 in all. He avers that it was by inadvertence and mistake that the fee of $30 was not paid originally, and the application made, in terms, for a patent for a design, under § 11 of the act of March 2, 1861. He presents an amended specification, in which the invention is described as a "new and original shape or configuration of steel or wrought iron rolled pipes, tubes, or hollow shafts or pillars ;" and is claimed in the following terms: "As a new and original shape or configuration of tubes, pipes, hollow shafts, or hollow pillars or posts of steel, or wrought or malleable iron, a machine-rolled tube or pipe or hollow shaft or hollow post, of uniform and symmetrical hexagonal perimeter, area, and cross section, in every part of its length, and having no projections upon its surface or beyond its angles." In support of his prayer he urges that the question whether his patent be for an invention or design is merely one of classification, which is within the discretion of the Commissioner, and he insists that this is a case in which that discretion ought to be exercised in his favor.

Prior to the act of August 29, 1842, there was no law which permitted the granting of letters patent for "shapes," "configurations," "designs," "ornaments," "patterns," and the like, which did not involve some mechanical principle, or amount to a new machine or manufacture within the meaning of the patent law.

By that act and the act of March 2, 1861, these subjects were made patentable, not by enlarging the scope of the existing patent laws by the addition of new subjects of invention, but by independent legislation, providing for a new class of patents, granted to a different

class of persons, for a different class of subjects, for different periods of time, and upon the payment of different fees.

It is not a matter of discretion with the Commissioner whether the subject of an application be a machine, or a design for a manufacture; a manufacture, or a new and original shape or configuration of an article of manufacture; a composition of matter, or a composition in alto or basso-relievo; an art, or a pattern, print, or picture. It is a matter of law, in which a mistake is fatal. These subjects of invention or contrivance are in truth as distinct from each other as either is from a copyright.

The applicant treats this matter as if it were simply a matter of mistake as to the term for which he should have applied for letters patent; but in truth the error, if error there were, was in the character of the application itself. He applied for a patent for a new product, paying the fee for an examination, and paying for a patent for seventeen years. He described, not a design for a manufacture, but a manufacture. He claimed, not a new shape, but a new thing. I know of no discretion. or authority vested in the Commissioner to turn this application into an application for a design, nor any process by which it can be accomplished short of a new application. A single illustration will make this sufficiently obvious. An alien may apply for letters patent for an invention, but not for a design, unless he has resided in this country for more than one year and made oath of his intention to become a citizen. It would be impossible, therefore, to turn the application of the alien for an invention into an application for a design, how

ever clearly the subject-matter might place it in the latter class of subjects.

I regard the eleventh section of the act of 1861 as distinct from the remainder of the law as if it formed the subject of a separate statute, and the codifiers of the patent laws evidently so regarded it, for they collected all the matter relating to design patents in a separate chapter. (Root v. Ball, 4 McLean, 180.)

281. FORM OF PETITION FOR LETTERS PATENT FOR A DESIGN.

To the Commissioner of Patents:

Your petitioner prays that letters patent may be granted to him for the new and original design set forth in the annexed specification.

THOMAS TASTY.

282. FORM OF SPECIFICATION FOR A DESIGN.—

I, Thomas Tasty, of New Haven, in the county of New Haven, and State of Connecticut, have invented and produced a new and original design for carpets, of which the following is a specification :

The nature of my design is fully represented in the accompanying photographic illustration, to which reference is made:

Claim.

I claim as my invention the design for a carpet, as shown.

Thomas Tasty, the above-named petitioner, being duly sworn, (or affirmed,) deposes and says, that he verily believes himself to be the original and first inventor of the design for carpets described in the foregoing specification; and that he does not know and does not believe that the same was ever before known or used; and that he is a citizen of the United States. THOMAS TASTY.

Sworn to and subscribed before me this 13th day of March, 1869.

SIMON SHALLOW,

Justice of the Peaec.

SEO.

XVII. Trade-Marks.

284. Act of July 8, 1870.

285. Object and effect of the law. 286. Patent Office requirements. 287. Duplicate copies.

SEC.

288. Record of assignment.

289. Form of petition and oath. 290. Form of transfer.

291. Form of certificate.

284. ACT OF JULY 8, 1870.-For the provisions of the act of July 8, 1870, concerning trade-marks, see Part I, p. 36. 285. OBJECT AND EFFECT OF THE LAW.-In the case of King ex parte, (Commissioners' Decisions, September 19, 1870,) the Commissioner says: "Applicant tenders $30 and asks for a patent for fourteen years for a 'design for a trademark.' He says: "The distinctive features of my design consist of my portrait, placed in the center lengthwise, and surmounted by the British coat-of-arms, about which is arranged, in a semicircular form, the words "King's Sauce Royal." Upon the left of my portrait is a shield or tablet, containing the words "Shake well the bottle before using," and upon the opposite side a similar tablet, containing the words "None genuine without my portrait and signature, W. King," said signature being a fac simile of my handwriting. Although the above-named tablets are used, they are not considered as essential to the design, and may be omitted if desired.

"Having thus fully set forth the nature and merits of my invention, what I claim as new, is: The hereinbefore described design, substantially as shown.'

"Prior to the act of July 8, 1870, no protection was afforded by statute for trade-marks eo nomine. They were left to the protection of the common law, except where the design was of such character as to fall properly within

the subjects patentable as designs. In such case they have been patented, usually with the addition of the words for a trade-mark.' These words were, however, merely descriptive, and carried with them no guaranty as to the use of the trade-mark. In other words, if goods had been sold with such a design affixed, the only penalty that could have been recovered, under the statute, would have been for the infringement of the design as an ornament, and no recovery could have been had of the damage resulting to the injury to the trade of the manufacturer by a violation of his trade-mark in the sale of the articles to which it was attached.

"It was to remedy this evil, and to give promptly, by statute, that protection to trade-marks which the common law tardily afforded, that Congress passed so much of the act of July 8, 1870, as relates to this subject. By the provisions of that act, a trade-mark, whether old or new, may be registered in the Patent Office by its owner, and by the payment of $25 protection is afforded for thirty years. As this protection is more ample, and covers more than double the time for less money, it is difficult to see why applicant, or any one else, should now seek a design patent for a trade-mark. The folly of the application does not, however, relieve me from the necessity of deciding upon its legality.

"The only clause of the designs act under which trademarks can possibly fall is that which enumerates' any new and original impression, ornament, pattern, print, or picture, to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture.' This manifestly refers to the external ornamentation of manufactured articles, and it requires, first, a specific article