home registration in order that our own nationals may avail themselves of the same advantage in foreign countries.

In the absence of such amendment, the question may be taken care of by an amendment of the International Convention specifically providing that persons entitled to its benefits are not required to produce certified copies of home registration. Such a stipulation would be self-executing in the United States and would supersede the requirement of the Lanham Act.

THE PATENT OFFICE AS GUARDIAN OF THE
PUBLIC INTEREST IN TRADE-MARK
REGISTRATION PROCEEDINGS

WALTER J. DERENBERG*

I

INTRODUCTION

It is one of the declared purposes of the Lanham Trade-Mark Act of 1946 to confer upon the owner of a registered trade-mark a greater measure of security than was available under the predecessor acts. While the Act of 1905 was based on the theory that the Federal Government could not under the commerce clause of the Constitution enact legislation granting substantive statutory rights to the owner of a trade-mark,1 the new law is based on the presupposition that within the realm of commerce, as broadly defined in Section 45 of the Act, a federal registration statute may create substantive rights beyond the mere procedural advantages which resulted from registration under the previous acts. Outstanding among the sections of the new Act which create substantive rights are the constructive notice section (Section 22) and the incontestability section (Section 15). The latter, while subject to numerous exceptions, will protect the owner of a registered mark after the expira

Trade-Mark Counsel to the Commissioner of Patents; Associate Professor of Law, New York University. The views herein expressed are those of the author and do not necessarily reflect the views of the Patent Office.

American Steel Foundries v. Robertson, 269 U. S. 372 (1926); United States Printing and Lithograph Co. v. Griggs, Cooper & Co., 279 U. S. 156 (1929); American Trading Company v. H. E. Heacock Co., 285 U. S. 247 (1932); Liddy, Has Congress the Constitutional Power to Legislate on the Substantive Law of Trade-Marks? 6 FORD. L. REV. 408 (1937); Schechter, Fog and Fiction in Trade-Mark Protection, 36 COL. L. Rev. 60 (1936); Fathchild, Territoriality of Registered Trade-Marks, 3 Idaho L. J. 193 (1933); March, Territorial Scope of the Trade-Mark Act of 1946, 38 T. M. Rep. 955 (1946); Diggins, Federal and State Regulation of Trade-Marks, this symposium, supra.

The Second Circuit Court of Appeals, in its decision in S. C. Johnson & Son v. Johnson, 81 U.S.P.Q. 509 (1949), for the first time categorically held that the new act would "indeed put federal trade mark law upon a new footing." The court then said:

"The Act of 1905 had made the registration of a trade-mark only prima facie evidence of ownership, and the question must be regarded as never finally settled whether it created a substantive federal trade mark law, as distinct from the common law of the states, or whether it merely gave jurisdiction to the district courts and certain procedural advantages to the owner. The Lanham Act put an end to any doubts upon that score, and to the confused condition in which those doubts involved the whole subject, especially after Eric Railroad Company v. Tompkins." Id. at 511.

260 STAT. 443, 15 U. S. C. §1127 (1946). The definition reads: "The word 'commerce' means all commerce which may lawfully be regulated by Congress." This definition has recently been held to be broad enough to permit injunctive relief even against a purely intrastate infringer of a mark registered under the Act of 1905. Cole of California v. Collette of California, 79 U. S. P. Q. 267 (D. Mass. 1948); but see, for a contrary view, C. B. Shane Corp. v. Peter Pan Style Shop, 80 U. S. P. Q. 559 (N. D. Ill.

tion of the required five-year period of use against belated attacks on the technical validity of the registered mark or the title of its owner.3

As a necessary corollary to a statute thus enlarging the trade-mark owner's rights, certain additional precautionary provisions safeguarding the public interest were incorporated in the new Act. It would seem axiomatic that a statutory régime such as that presently prevailing in most common-law countries, which treats the registration of a trade-mark not as a mere “deposit" but as a grant of a statutory privilege available only after careful pre-examination by the Patent Office, must require a much larger degree of administrative scrutiny with respect to the granting of registrations than would be necessary in countries, such as France, where trade-marks are merely "deposited" and where the validity and scope of the registrant's rights are left entirely to judicial determination. Such a "deposit" system prevails in the United States under the Copyright Act of 1909, but not under the Federal TradeMark Act. The more quasi-judicial powers are conferred by statute upon the administrative agency charged with the registration of trade-marks, and the broader the substantive legal effects which may flow from the allowance of applications for registrations, the greater and more important becomes the duty of those charged with the administration of the statute constantly to bear in mind and carefully to weigh the possible adverse effect of the registration on the public interest. It was not surprising, then, that shortly before the final enactment of the Act of 1946, it was asserted by the Antitrust Division of the Department of Justice that the Act as then written failed adequately to safeguard the public interest in numerous respects, and that in particular the provisions concerning incontestability should be restricted by certain limitations aimed at the prevention of monopolistic abuses of registered trade-marks. If the new Act as finally enacted is examined as to the extent to which the interest of the general public is recognized, it becomes apparent that the public interest has found statutory expression in two entirely different ways:

1. On the one hand, we find the principle stated and reiterated many times throughout the statute that no mark shall be registered or legally protected which would be likely to cause confusion or mistake in the public mind. This is, of course, the aspect of the public interest with which the Patent Office in registration pro

* Ooms, Incontestability, this symposium, supra: DAPHNE ROBERT, THE NEW TRADE-MARK MANUAL 135 et seq. (1947); Derenberg, Trade Marks Under the Lanham Act, Fortune, Feb. 1949, p. 147; but cf. Williamson, Trade-Marks Registered Under the Lanham Act Are Not Incontestable, Printers Ink, June 6 and June 13, 1947, reprinted in 37 T. M. Rep. 404 (1947).

It has been suggested by eminent authority that a system of administrative examination similar to that now prevailing in case of patents and trade-marks should be substituted for our present copyright "deposit" system, under which the Register of Copyrights has been held to have, for the most part, ministerial functions only. Cf. letter to the Librarian of Congress concerning certain aspects of the Copyright Act of March 4, 1909, by C. L. Bouvé, Register of Copyrights, Government Printing Office, 1938, p. 53 et seq.

"Hearings before the Subcommittee on Trade-Marks of the House Committee on Patents, 77th Cong., 2d Sess. (1942); testimony of Ernest S. Meyers, id. at 35; testimony of Bartholomew Diggins, id. at 3; and testimony of Elliott H. Moyer, ibid. Also, Hearings before the House Committee on Patents on H. R. 82, 78th Cong., 2d Sess. (1944); testimony of Elliott H. Moyer, id. at 71, 141. Cf. particularly the statement by the Department of Justice on H. R. 82, with appendices, reprinted in full, id. at 58 et seq.

ceedings is primarily concerned. As if to make certain that the Office should never lose sight of this duty, at least ten different sections of the new Act refer in one way or another to the protection of the public against possible deception. After requiring the Patent Office in Section 2(d) not to register any mark which may be confusingly similar to a previously registered mark or to a trade name previously used, the proviso permitting concurrent registrations immediately stresses again that such registration may be granted only after a determination by the Commissioner that "confusion or mistake or deceit of purchasers is not likely to result in the continued use of such marks . . ." Sections 3 and 4, which for the first time provide for the registration of service marks, collective marks, and certification marks, exclude from registrability any marks which may lead to confusion in the public mind as to certain representations made by the applicants therefor. Again, Section 5, which provides for registration of marks used by "related" companies, contains an exception with regard to applicants using the mark in such a manner as to deceive the public. Moreover, upon a suggestion by the representatives of the Department of Justice, Section 5 was limited to situations in which the mark is "legitimately" used by related companies, thereby apparently making it the duty of the Patent Office to scrutinize the legitimacy of the relationship between a parent and a subsidiary company, or that between a licensor and licensee. Section 10 of the new Act, which greatly liberalizes the rigid assignment provision of Section 7 of the Act of 1905, immediately warns against any misuse of the mark by the assignee in such a way as to misrepresent the source of the goods or services in connection with which the mark is used. Such abuse is also made a ground for cancellation of a registration at any time (Section 14 (c)). The same section for the first time authorizes the Federal Trade Commission to apply for cancellation of fraudulently obtained registrations. The provisions for opposition, interference, and cancellation proceedings generally reflect the same basic idea that no mark shall be registered or remain on the register which is likely to cause confusion in the public mind. It is thus clear that under the structure of the Lanham Act the safeguarding of the public interest plays a vital part in the administrative determination of any pending application as well as in all inter partes decisions in opposition, interference, or cancellation proceedings.

2. Protection of the public against likelihood of confusion or deception is not, however, the only aspect of the public interest involved in the registration and protection of trade-marks. Equally important is the interest of the public in not being deprived of the common use of words which are in the public domain. When, therefore, the new concept of an "incontestable" right was introduced into the new statute, it was deemed necessary expressly to provide that no incontestable right

For a detailed discussion of the concept of related companies under the new act and its legal implicatons, cf. Taggart, Trade-Marks and Related Companies: A New Concept in Statutory Trade-Mark Law, and Shniderman, Trade-Mark Licensing—A Saga of Fantasy and Fact, supra; Statement of Department of Justice on H. R. 82, supra note 5, at 63.

should ever be acquired in a mark which is or has become a common generic term." It is further provided that in case of a formerly patented article a cancellation proceeding may be instituted at any time, incontestability notwithstanding, if the name has become a common descriptive term. Moreover, a number of provisions were added to safeguard the public interest against monopolistic abuses of trade-marks and certification marks. Specifically, it is now provided in Section 33(b) (7) that it shall be a defense in an infringement suit based on an otherwise incontestable trademark that it has been, or is being, used to violate the antitrust laws of the United States.8

The present article will not be concerned with those aspects of the public interest which center around these anti-monopoly provisions of the new Act. Nor will it add to the already voluminous literature discussing the legal requisites of trade-mark infringement. Rather, it will try to pose and examine the problems which daily confront the Patent Office in balancing the private interest of an applicant or a registrant against a possible adverse public interest. As will be shown hereafter, this problem is particularly difficult because of the indefinite and nebulous nature of the present "public interest" concept, and is beclouded by a failure to realize that the problem arises in greatly varied forms in three different stages of a registration proceeding: (1) It is presented first when the Patent Office as administrative agency considers the registrability of a trade-mark ex parte under Section 2 of the Act; (2) it may again appear in a somewhat different form in the course of an opposition, cancellation, or interference proceeding when the Commissioner of Patents acts in a quasi-judicial capacity in determining a controversy between two or more private parties; (3) and it may enter into the picture for the third time in a still different form when the Commissioner no longer serves either as administrator or in a judicial capacity, but is sued in equity by an unsuccessful applicant after a final ex parte rejection, or is joined as a co-defendant in such action by the defeated party to an opposition or other inter partes proceeding.

*Section 15(4) of the Lanham Act, 60 Stat. 433, 15 U. S. C. §1064 (1946). The section inadvertently also includes "trade names" in the exception from incontestability although "trade names" as defined in §45 are not registrable as trade-marks on the principal register. This part of §15 was added in conference upon the suggestion of the representatives of the Department of Justice a few days before the bill was finally enacted.

8

The significance of this proviso is fully discussed in Timberg, Trade-Marks, Monopoly, and the Restraint of Competition, this symposium, infra. It is also treated in detail in MILTON HANDLER, TRADEMARKS AND THE ANTITRUST LAWS, a lecture before the Practising Law Institute, New York, in a series entitled TRADE-MARKS AND THE LANHAM ACT, p. 225, reprinted in 38 T. M. Rep. 387 (1948). Cf. also Borchardt, Are Trademarks an Antitrust Problem? 31 GEO. L. J. 245 (1943); Taggart, Trade Marks: Monopoly or Competition? 43 MICH. L. Rev. 659 (1945).

9

Callmann, Trade-Mark Infringement and Unfair Competition, this symposium, supra. JAMES F. HOGE, TRADE-MARK INFRINGEMENT (Practising Law Institute Lectures, supra note 8, at 93), reprinted in 38 T. M. Rep. 400 (1948). Of the older literature, cf. Wolff, Non-Competing Goods in Trade-Mark Law, 37 COL. L. REV. 582 (1937); Goble, Where and What a Trade-Mark Protects, 22 ILL. L. REV 379 (1927); Oates, Relief in Equity Against Unfair Trade Practices of Non-Competitors, 25 ILL. L. REV. 643 (1931); Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813 (1927). The most recent discussion of this subject may be found in Lunsford, Trade-Mark Infringement and Confusion of Source: Need for Supreme Court Action, 35 Va. L. Rev. 214 (1949). Cf. also I HARRY D. NIMS, THE LAW of Unfair CompETITION AND Trade-Marks 667 et seq. (4th ed. 1947).