Dissenting Report of Mr. Greeley With Reference to the Revision of the Trademark Law

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Dissenting Report of Mr. Greeley With Reference to the Revision of the Trademark Law  (1898) 
by Arthur P. Greeley
The Dissenting Report of Mr. Greeley With Reference to the Revision of the Trademark Law is an 1898 report submitted to the United States Congress by Arthur P. Greeley, in response to a majority report submitted by two other members of a panel reviewing patent and trademark laws. The panel was unanimous in its report on the patent laws; Congress chose to follow the recommendations in Greeley's dissenting report in crafting a new trademark law.

Contents

REPORT OF THE COMMISSIONERS APPOINTED TO REVISE THE STATUTES RELATING TO PATENTS, TRADE AND OTHER MARKS, AND TRADE AND COMMERCIAL NAMES. UNDER ACT OF CONGRESS APPROVED JUNE 4, 1898.[edit]

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Dissenting Report of Mr. Greeley With Reference to the Revision of the Trademark Law[edit]

Patents are the creation of statute law, and the existing laws concerning patents are readily determined from an inspection of the statute books. Trademarks, as well as other marks, trade and commercial names, on the other hand, do not owe their origin to statutes. The right of property in a trademark is recognized by the common law, and civil remedies for its protection existed long prior to any legislation by Congress and have remained in full force since such legislation. In order to determine what changes should be made in the existing laws concerning trade and other marks and trade or commercial names it is important to consider not only the acts of Congress relating to this subject and the causes which led to their enactment, but also the origin and extent of the protection afforded by the unwritten law. This can best be done by reviewing the history of trademarks and trademark protection in the United States from the earliest times.

NO REFERENCE TO TRADEMARKS IN THE CONSTITUTION.[edit]

While it is expressly provided in the Constitution that Congress shall have power "to promote the progress of Science and Useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,"[1] no provision giving Congress in express terms the power to provide for the protection of the distinctive marks used in commerce by manufacturers and traders to distinguish their goods from other goods of the same class — in other words, trademarks — is there found.

The omission from the Constitution of all reference to so important a subject as the protection of trademarks has become to modern commerce a subject not less important to the public interest at the present time than the protection of inventors by patents or the protection of authors by copyright, and a subject of vital importance to the growing export trade in manufactures, might properly bo taken as significant of an intent on the part of the framers of the Constitution that Congress should not have the power to legislate on the subject if, at the time of the adoption of the Constitution, this subject had been recognized as one of importance to the commerce of the United States, either internal or foreign. That it was not so recognized at the date of the adoption of the Constitution or for many years thereafter, and the reasons why it was not and could not be so recognized without a more than human insight into the future, are clear from a consideration of the industrial and commercial conditions of the time.

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COMMERCIAL CONDITIONS IN THE COLONIES.[edit]

The three millions of people then in the United States were "for the most part exclusively addicted to agriculture and likely from local circumstances to remain in this condition." (Federalist, No. XI.) In a country so newly settled and so well adapted to agriculture, manufacturing industries and commerce would from natural conditions have been of slow growth if their development had been unhindered In other causes. Their development, however, had not been unhindered.

Throughout the colonial period the settled policy of Great Britain had been to secure for her own manufacturers the monopoly of every branch of consumption in the colonies, to discourage all attempts to manufacture in the colonies such articles as could be provided for them by the manufacturers of the mother country. The colonies were held under restraint so absolute that, beyond the common domestic industrial and the most ordinary mechanical employments, no kind of manufactures was permitted. Every form of industry which could compete with British manufactures was discouraged or forbidden. Even Lord Chatham declared that if he had his way he would not allow the colonists to make so much as a hobnail for themselves. Adam Smith in his Wealth of Nations, says of the attitude of Great Britain toward certain industries in the American colonies that —

She prohibits the exportation from one province to another by water, and even the carriage by land upon, horseback or in a cart, of wools and woolen goods, of the produce of America, a regulation which effectually prevents the establishment of any manufacture of such commodities for distant sale, and confines the industry of her colonists in this way to such coarse and household manufactures as a private family commonly makes for its own use, or for that of some of its neighbors in the same province.

The legislation of Great Britain adopted with the purpose of preventing the development of manufacturing industry and commerce in the colonies is all a matter of record and a review of it may be found in the History of Iron in All Ages, by Swank (Philadelphia, 1892). also in Our Country, Senate Document, No. -438, Fifty-sixth Congress. That it was effective for its purpose is a matter of history. At the time of the adoption of the Constitution, the commerce of the United States is said to have been "at the lowest point of declension" (Federalist, No. XV), and it appears from the Report on Manufactures, ("particularly the means of promoting such as will tend to render the United States independent of foreign nations for military and other supplies"), submitted to the Second Congress by Alexander Hamilton, then Secretary of the Treasury, that "the expediency of encouraging manufactures in the United States was not long since deemed very questionable," and though ho says that the expediency of encouraging manufactures "appears at this time to be pretty generally admitted," he felt obliged in his report to recognize the fact that there were "nevertheless, respectable patrons of opinions, unfriendly to the encouragement of manufactures," and to recognize this fact to the extent of stating fully and fully answering the arguments by which such opinions were defended.

PURPOSE OF THE UNION.[edit]

While it is also to be said that one of the principal purposes to be answered by the union was "the regulation of commerce with other nations and between States (Federalist, No. XXIII), and, in the

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words of Mr. Webster in his argument in the case of Gibbons v. Ogden (9 Wheaton, 1), quoted by the Supreme Court in Guy v. Baltimore (100 U. S., 434), "it had its immediate origin in the necessities of commerce, and for its immediate object the relief of these necessities by removing their causes, and by establishing a uniform and steady system," it is clear from the then existing conditions that the commerce of the time between the States was in a very small degree concerned with commodities of domestic manufacture.

As late as 1829 it was said of the manufacturing interests of this country that—

The manufacturing operations in the United States are all carried on in little hamlets, which often appear to spring up in the bosom of some forest, gathered around the waterfall that serves to turn the mill wheel. These villages are scattered over a vast extent of country — from Indiana to the Atlantic, and from Maine to North Carolina — instead of being collected together, as they are in England, in great manufacturing districts.[2]

DEVELOPMENT OF TRADEMARK LAW OF GREAT BRITAIN.[edit]

In Great Britain, prior to the date of the adoption of the Constitution of the United States and for many years thereafter, the importance of the protection of trademarks was little understood, notwithstanding that the importance of the development of manufacturing industries and commerce was fully recognized and every effort was made to stimulate and encourage its growth, with the result that at that time Great Britain was recognized as the leading nation of the world in manufactures and in commerce, and the fact that even then the importance of trademarks was not understood is significant, since it was to Great Britain, the parent country, that the framers of the Constitution mainly looked for information and suggestions to guide them in determining the provisions to be incorporated in that document. Great Britain not only had then no special law on the subject, but it had not then been recognized by the courts of that country that there could be any property right in the distinctive mark used by a manufacturer or trader on goods sold by him. But three cases, so far as can be ascertained from the reports, involving the right to the use of a trademark (one in 1590, concerning the use of a mark on cloth; one in 1742, concerning the use of the Great Mogul stamp on cards, and one in 1783, concerning the use of a mark for a medicinal preparation) had come before the courts of Great Britain for decision. In the most important one of these cases (Blanchard v. Hill, 1742, 2 Atk., 484, Cox Manual, 2), so little was the subject then understood, an injunction was refused on a state of facts on which an injunction would certainly be granted to-day. (Amoskeag Mfg. Co. v. Spear, 2 Sand., S. C., 599; Cox Am. Trademark Cases, 87.) As the conditions of commerce improved, particularly the facilities for intercommunication between distant places, by which it was made possible for manufacturers to compete with others than those in their immediate neighborhood, the importance of the protection of trademarks began to be recognized and the British courts found it necessary to the protection of honest trade and the prevention of fraud to interpose by injunction to prevent their infringement. It was not, however, until 1838 that an English court (in the case of Millington v. Fox, 3 My. & Cr., 338;

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Cox Manual, 63) held that the owner of a trademark was entitled to injunction against the use of his mark by those who used it without fraudulent intent; in other words, recognized the right to the exclusive use of a trademark as a property right. Not until 1862 was any special law on the subject of trademarks enacted in England, and up to that time the only remedies against infringers in that country were the common-law remedies of damages and injunction. Not until 1875 was any provision made by law in Great Britain for the registration of trademarks.

JEFFERSON'S REPORT ON TRADEMARK PROTECTION.[edit]

The first suggestion of the desirability of the protection of trademarks by statutory law which is of record in this country was contained in a petition presented to the Second Congress by Samuel Breck and others, of Boston, asking that they be given the exclusive right to use certain marks for designating the sailcloth of their manufacture, on which petition Thomas Jefferson, then Secretary of State, made the following report:

DECEMBER 9, 1791.
The Secretary of State, to whom was referred by the House of Representatives the petition of Samuel Breck and others, proprietors of a sail-cloth manufactory in Boston, praying that they may have the exclusive privilege of using particular marks for designating the sail-cloth of their manufactory, has had the same under consideration, and thereupon
Reports, That it would, in his opinion, contribute to fidelity in the execution of manufacturers to secure to every manufactory, an exclusive right to some mark on its wares proper to itself.
That this should be done by general laws, extending equal right to every case to which the authority of the Legislature should lie competent.
That those cases are of divided jurisdiction: Manufactures made and consumed within a State being subject to State legislation, while those which are exported to foreign nations, or to another State, or into the Indian Territory, are alone within the legislation of the General Government.
That it will, therefore, be reasonable for the General Government to provide in this behalf by law for those cases of manufacture generally, and those only which relate to commerce with foreign nations, and among the several States, and within the Indian Tribes.
And that this may be done by permitting the owner of every manufactory to enter in the records of the court of the district wherein his manufactory is the name with which he chooses to mark or designate his wares, and rendering it penal in others to put the same mark to any other wares. (Jefferson's Complete Works, Washington, 1854, vol. 7, 563; Am. State Papers, vol. 14, p. 48.)

The report indicates very clearly that the question of the protection of trademarks was one which was wholly new to Jefferson. It also shows that with wonderful foresight he not only clearly grasped the importance of the question to the growing manufacturing industries of the country, but was fully satisfied that the provisions of the Constitution were ample to warrant Congress in passing laws which should provide in the interests of the citizens of the United States for the protection of trademarks used in interstate and foreign commerce.

The essential features of the law he suggests — the requirement of notice of the claim of right to the mark by registering it with an officer of the Government and provision for the punishment of infringers of registered marks — are to-day the essential features of the trademark laws of all foreign countries which have such laws, practically all countries which have any pretension to commercial importance.

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DEVELOPMENT OF TRADEMARK LAW IN THE UNITED STATES.[edit]

The commercial conditions of the time were not such as to create any general demand for such a law as was suggested in Jefferson's report and it does not appear that any attempt was made to pass such a law. No bill on the subject appears to have been introduced in Congress until nearly three-quarters of a century later.[3] and then rather for the purpose of carrying into effect the provisions of certain treaties with foreign nations than in response to any demand from the manufacturing interests of the United States.[4] That there was no general recognition of the importance of the protection of trademarks appears from the fact that not until 1837 was any controversy respecting the right to a trademark on articles of merchandise (Thomson v. Winchester, supreme court of Massachusetts, 1837, 19 Pick., 214; Cox Am. Trademark Cases, 7) brought before any court of record in the United States, and not until 1844 (Taylor v. Carpenter, circuit court of the United States, district of Massachusetts, 1844, 3 Story, 458; Cox Am. Trademark Cases 14), was any such case brought before a United States court. It is to be noted that in this latter case the suit was brought by an English manufacturer for infringement of his trademark by citizens of the United States.

These two cases were followed by one in each of the years 1845, 1846, 1847, 1848, two in 1849, one in 1850, one in 1851, one in 1853, three in 1854, two in 1855, three in 1856, six in 1857, one in 1859, seven in 1800, one in 18til, two in 1862, one in 1863, one in 1864, four in 1S65. seven in 1S67, seven in 1868, four in 1869, and three in 1870, a total up to 1870 of sixty-two cases, all but six of which were in the State courts of the following States: In the courts of the State of New York, forty cases; of Massachusetts, two; of Rhode Island, two; of Pennsylvania, seven; of California, two; of Connecticut, two; of Missouri, one.

Not until 1871 was any case involving the right to a trademark brought before the Supreme Court of the United States (Canal Co. v. Clark. 13 Wall., 311).

The fact that it was not until many years after the adoption of the Constitution that the importance of the protection of trademarks began to be appreciated is clear!}' shown by the decision of the supreme court of New York in the case of Clark v. Clark, decided in 1857 (25 Barb., 76; Cox Am. Trademark Cases, 206). In this decision the court says:

The law of trademarks is of recent origin and may be comprehended in the proposition that a dealer "has a property in his trademark." The ownership is allowed to him, that he may have the exclusive benefit of the reputation which his skill has (riven to articles made by him, and that 110 other person may be able to sell to the public, as his, that which is not his.

See also the case of Phalon v. Wright, decided in 1864 in the court of common pleas of the county of Philadelphia (5 Philadelphia, 464; Cox Am. Trademark Cases, 307), in which the court says:

It is somewhat strange that in the State of Pennsylvania, whose people are so largely engaged in manufactures, the subject of "trademarks" should not nave been more frequently presented to our courts for decision.
The case of Colladay v. Baird, reported in fourth Phil. Rep., 139, decided in this court, in which my brother Ludlow delivered an elaborate and well-considered opinion, seems to be the only reported decision in this State upon the subject.
In New York the subject of trademarks has been frequently presented for judicial consideration, and in the decisions of the courts of that State and of the English tri-
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bunals, with one or two from other States, we find the sources of the information required for the investigation of the case before us.
It is well settled that a court of equity will exercise its power for the protection of the owner of a trademark in the exclusive enjoyment of that device or symbol chosen by him to designate his goods or manufactures, and to distinguish them from those of others.
Every man has a right to the products of his own labor, and is entitled so to distinguish them, that persons dealing in or purchasing his commodities may be readily able to recognize them as his. The maker may therefore either with or without the use of his name adopt a word, title, symbol, or figure to designate the ownership or manufacture of the goods. In the use of such "trademark" he is to be protected from the efforts of others who would take advantage of his enterprise or skill, and, by imitation, endeavor to impose upon the public and to deprive him of the just reward of his industry.
The adoption of a trademark or device to indicate the manufacture or origin of a certain article does not give any right to the exclusive production of the article so marked. Any article of manufacture, unless it be protected by a patent, may be made and sold by any person. There is no such thing as an exclusive right to any particular branch of industry. The only restriction is that each party shall stand upon his own merits, and none shall be permitted, by the use of marks or symbols, to pretend that the goods offered by him are the products of another. (6 Beav., 72; Perry v. Truefitt, Coffeen v. Brunton, 4 McLean, 516.) This rule has even been applied to cases where there was no intentional deception, as where the manufacturer of steel was prohibited from stamping upon his manufacture certain words which he supposed were descriptive of a particular quality of steel, but which were, in fact, the name of the original manufacturer, and indicated his ownership. (Millington v. Fox, 3 Myl. & Cr., 338.)

And it was well said of the growth of the importance of the trademark by Judge Paxson in the case of Dixon Crucible Co. r. Guggenheim (3 Am. Law Times R. (St.), 288, and 2 Brewster, 321; Cox Am. Trademark Cases, 559), that—

In a rude age, when manufacturers were few, and those of only useful and indispensable articles, trademarks were but little known and seldom, if ever, violated. It was when wealth and luxury increased, and manufactures multiplied accordingly, that the use and value of a trademark became distinctly recognized. In the present age (1870), with the vast extension of the manufacturing interest, the law upon this subject is of necessity frequently invoked; and it is settling down into a consistent theory.

EARLY TRADEMARK LAWS OF THE STATES.[edit]

While during the interval between the report made by Mr. Jefferson and the passage of the national trademark law, approved July 8, 1870, many laws were passed by the legislatures of the several States for the inspection of foods for men and animals and other products, and their obligatory marking, for the purpose of preventing fraud upon the public, it was not until 1845 that a law was passed in any one of the States of the United States for the protection of trademarks or other marks by which goods may be distinguished on the market.

The legislature of New York enacted a penal law in that year to "punish and prevent fraud in the use of false stamps and labels." (Laws of 1845, chap. 279.) This law was amended in 1850 (chap. 123), and repealed in 1862 (chap. 306) by a new law entitled An act to prevent and punish fraud in the use of false stamps, brands, labels, and trademarks." The new law was amended in 1803 (chap. 209). A penal law relating to the marking of bottles used by manufacturers of mineral waters was passed in 1847.

In 1847 a penal law was passed in Connecticut providing for the punishment of every person who shall use, forge, or counterfeit the individual stamp or label of any mechanic or manufacturer with intent to defraud another, etc.

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In the same year a penal law was enacted in Pennsylvania "to punish and prevent frauds in the use of false stamps and labels." (Law No. 140.) This was amended in 1855 (Law No. 534), and finally incorporated with slight changes into an act to consolidate the penal law. (I860, sees. 173, 174, 175.) Mineral-water manufacturers were protected in their marks by law in 18-49 (Laws of 1849, pp. 524, 680) and the manufacturers of malt liquors in 1865 (Laws of 1865, p. 58).

In 1850 a penal act (chap. 50) was passed in Massachusetts to punish the counterfeiting of a private label or trademark, etc. In 1853 (chap. 156) a civil remedy by injunction and in 1859 (chap. 50) in damages was given to owners of trademarks. In 1870 "An act to prevent fraud in the sale of watches" was passed.

In Ohio a penal act was passed in 1859 "to prevent and punish fraud in the use of false stamps, brands, labels, or trademarks. In Iowa, in 1860, punishment was provided for the counterfeiting of any mark.

In Michigan an act was approved February 6, 1863, " to prevent and punish the counterfeiting and fraudulent use of trademarks, labels, stamps, etc."

In Oregon "An act to provide for the registration and protection of trademarks" was approved October 21, 1864. Registration was provided for; also the forfeiture to the owner of the trademark of one- half of the infringing goods, or their value, for the first offense, and the whole for the second offense; and in 1864 the punishment of infringement was provided for in the Criminal Code (sec. 583.)

In Nevada a penal law was passed in 1865. Registration was provided for; fees, $20. Infringement was punished as a misdemeanor.

In Kansas "An act to prevent the counterfeiting, changing, or destroying trademarks, devices, and brands" took effect May 31, 1866. It provided that the infringer should pay to the owner of the trademark not exceeding $25 for each offense.

In Maine a law was passed in 1866 (chap. 10) making infringers liable to damages and giving power to the supreme court to grant injunctions.

In Missouri "An act to protect mechanics, manufacturers, and others in their trademarks" was approved March 6, 1866. It provided for registration, which should be notice. A second act with the same title was approved February 22, 1870, which provided for penalties for infringement.

These are all the State statutes on the subject prior to the first national statute approved July 8, 1870. Eight States provided for the punishment of the improper intentional use of a trademark by fine or imprisonment; two provided both criminal and civil remedies, and two provided a civil remedy only.

TRADEMARK TREATY WITH RUSSIA.[edit]

In 1868 a treaty providing for the reciprocal protection of trademarks was concluded by the United States with Russia.[5] This was in the form of an article additional to the treaty of commerce and navigation of December 6-18, 1832, and was concluded January 27, 1868. The substance of this article is as follows:

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The high contracting parties, desiring to secure complete and efficient protection to the manufacturing industry of their respective citizens and subjects, agree that any counterfeiting in one of the two countries of the trademarks affixed in the other on merchandise, to show its origin and quality, shall be strictly prohibited and repressed, and shall give ground for an action of damages in favor of the injured party to be prosecuted in the courts of the country in which the counterfeit shall be proven.
The trademarks in which the citizens or subjects of one of the two countries may wish to secure the right of property in the other must be lodged exclusively, to wit: The marks of citizens of the United States in the Department of Manufactures and Inland Commerce at St. Petersburg, and the marks of Russian subjects at the Patent Office in Washington.

The importance of trademarks had been long recognized in Russia. A law as early as 1667 required manufacturers of certain kinds of goods to place certain marks on their goods, but did not require the use of individual marks. A law of 1774 required the use of individual marks, rather, however, as a means of distinguishing goods on which, under the law, a tax was due to the Government from those which were not liable to the tax, and to distinguish such goods from foreign goods in case of reimportation, than for any such purpose as that for which trademarks are now used. A little later, in 1778, an order was issued requiring manufacturers of paper to use distinguishing marks "in order to determine more readily the quality of the paper and the honesty of the dealer." In 1830 a law was adopted establishing general rules for the protection of marks and doing away with the requirements of the use of marks. Under this law, which remained in force until the present law was adopted in 1896, the owners of trademarks, in order to secure the advantage of its provisions, were required to register their marks in the department of commerce and manufactures. The infringement of registered marks was made a criminal offense, punishable by loss of civil rights and transportation. In short, the law was, in its essential features, such a law as was suggested in Jefferson's report in 1791, above referred to.

TRADEMARK TREATY WITH BELGIUM.[edit]

Also in the year 1868, and also in the form of an addition to a treaty of commerce and navigation, that of 1858, was concluded by the United States under date of December 20, a similar treaty with Belgium.[6] In that country, as in Russia, the importance of the protection of trademarks had been long recognized, and the laws then and for many years in force provided for the registration of trademarks, at least those used in certain important lines of industry, and provided for the punishment of infringers of trademarks by tine and imprisonment. The laws relating to the registration and protection of trademarks were, owing to the changes in the political status of Belgium during the present century, derived from various sources and were in consequence inharmonious and in many respects unsatisfactory.

This condition of affairs was remedied by the adoption, in 1879, of the present trademark law. Article 17 of this law, by its enumeration of the laws repealed, indicates not only the unsatisfactory condition of the laws, but from the date of these laws shows that the question of the protection of trademarks had been long recognized as of great importance. This section is as follows (translation):

ART. 17. The provisions actually in force respecting trademarks are repealed,

especially the ordinance of the 23d Nivose, year IX, the law of the 22d Germinal, year XI, the decrees of February 20 and September 5, 1810, the royal ordinance of

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December 25, 1818, the ordinance of June 1, 1820, and the provisions of article 50 of the law of February 7, 1859, and of articles 184, 213, and 214 of the penal code in so far as they apply to such marks.

THE TREATIES WITH RUSSIA AND BELGIUM.[edit]

That these treaties were within the constitutional power of the President under section 2 of Article II has never been questioned. Only through such treaties could protection be secured for the rights of citizens of the United States to the exclusive use of their trademarks in these countries — rights which are now recognized as essential to the establishment of trade with these countries upon a permanent basis. In exchange for the assurance of such protection in these countries the President, with the advice and consent of the Senate, in accordance with the provisions of the Constitution, gave assurance to these nations that the rights of their subjects to the exclusive use of their trademarks should be protected in the United States. These treaties having been concluded in accordance with the provisions of the Constitution, it follows that it was incumbent upon Congress to provide, by law, for giving to them full force and effect in so far as they were not self-executing and to provide by appropriate legislation for the protection of the rights of citizens of the United States in so far as such rights might be in conflict with the claims of subjects of these nations.

In both of these treaties it was expressly provided that citizens of the United States and subjects of these foreign nations should give notice of their claim to the exclusive property in their marks by registration, the subjects of the foreign nations being required as conditional to protection for their marks to register them in the Patent Office at Washington, citizens of the United States being required to register the marks claimed by them in the Government offices provided for that purpose in the several countries.

As at the time these treaties were concluded there was no law authorizing the Patent Office to register trademarks, it was clearly necessary that legislation be enacted to provide for such registration, certainly so far as the registration of marks claimed by subjects of these countries as their property was concerned.

These treaties not only stipulate that the marks of the subjects of these foreign nations should be admitted to registration and be given thereby the color of protection which the mere fact of registration necessarily implies, but also stipulate that any counterfeiting of such marks in the United States should be "strictly prohibited and repressed," as well as that such counterfeiting should "give ground for an action of damages."

Damages for infringement of trademarks were given under the common law, but under the common law infringements could not be "strictly prohibited and repressed." Infringers could be enjoined from further infringement, but up to the issuance of the injunction the infringer incurred no penalty, could not be punished even by confiscation or destruction of the goods bearing the infringing mark. Continuance of the infringement after injunction issued was contempt of court for which the punishment was not always adequate. Clearly a statutory provision was needed if the treaty stipulations which provided that infringements should be "strictly prohibited and repressed" were to be carried out in good faith. The foreign owners

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of trademarks entitled to the benefits of their treaties undoubtedly expected, and it is not unreasonable that they should expect, to have in the United States protection for their trademarks in some degree commensurate with the protection afforded by the laws of their own country to their trademarks, laws which "strictly prohibited and repressed" the infringement of trademarks by making such infringement an offense punishable by fine and imprisonment, the benefit of which laws was assured under these treaties to United States citizens.

PROPOSED LEGISLATION TO GIVE EFFECT TO TRADEMARK TREATIES.[edit]

For the purpose of giving effect to the first of these treaties, that concluded with Russia, on April 7, 1869, Mr. Trumbull, from the Committee of the Judiciary, reported a bill in the Senate of the United States as follows:[7]

A BILL to execute the provisions of a certain treaty between the United States and His Majesty the Emperor of all the Russias, concluded on the twenty-seventh day of January, anno Domini eighteen hundred and sixty-eight.
Be it enacted by the Senate and the House of Representatives of the United States of America in Congress assembled, That any person who, with intent to defraud, shall falsely make, alter, forge, or counterfeit, in the United States, any trademark affixed in the dominions of His Majesty the Emperor of all the Russias, on any merchandise to show its origin or quality, which trademark shall have been lodged in the Patent Office of the United States in Washington, by any subject of the said Emperor, or any corporation existing in the said Emperor's dominions, or who shall in the United States utter and publish as true any such trademark, knowing the same to be false, altered, or forged, with intent to defraud any person, shall be deemed guilty of a misdemeanor, and, on conviction thereof, shall be punished by imprisonment at hard labor not more than three years, in the discretion of the court; and shall be liable to an action for damages in favor of the party injured thereby, to be prosecuted in any court having jurisdiction to hear and determine the same. (Bill S. 264, Forty-first Congress, first session.)

This bill was indefinitely postponed in favor of a bill reported on the same day (April 7, 1869) by Mr. Sumner, from the Committee on Foreign Relations, which was as follows:[8]

A BILL to prevent the counterfeiting of foreign trade-marks protected by treaty stipulations. Whereas treaties have been concluded between the United States and certain foreign powers, by which the contracting parties have mutually bound themselves to prevent their citizens or subjects from counterfeiting trademarks used by citizens or subjects of the other, and other similar treaties are proposed: Therefore, in order to carry into effect the stipulations which have been or may hereafter be made by the Government of the United States,
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, Whenever any citizen or subject of a foreign power uses any trademark on merchandise to show its origin and quality, and has taken the steps prescribed by the treaty to secure the right of property in such trademark, no person anywhere within the United States shall counterfeit the same.
SEC. 2. And be it further enacted, That whoever violates the provisions of the previous section, or knowingly sells or exposes for sale any article having such counterfeited trademark, shall be liable to the injured party in an action at law or equity, to be prosecuted in any court of the United States having jurisdiction thereof. (Bill S. 265, Forty-first Congress, first session.) This bill on April 22, 1870, was passed by the Senate after a discussion in which the defects of the bill were clearly pointed out by Mr. Carpenter in the following language:
I wish to call the attention of the chairman of the Committee on the Judiciary and also of the chairman of the Committee on Foreign Relations to the fact that the bill reported by the Committee on Foreign Relations seems to me to add nothing to the existing law. It simply says that whoever shall violate a trademark shall be liable to an action of damages. He is so without any statute. If any action what-
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ever is needed on the part of Congress, it is to make the law more stringent than is the common law. If any man should use a trademark fraudulently that is a misdemeanor; that is obtaining money under false pretenses. It is not like the case of an infringement of a patent, which a man may do without knowledge that a patent exists; hut if a man violates the trademark of another man and puts it on goods to sell for the purpose of defrauding, that is a misdemeanor and should be punished. The bill reported by the Committee on the Judiciary adds to the existing law, and I think the other bill does not.[9]

The bill was reported to the House of Representatives, but was not acted on. On February 7, 1870, Mr. Trumbull asked and, by unanimous consent, obtained leave to bring in the following bill, which was read twice, referred to the Committee on the Judiciary, and ordered to be printed:[10]

A BILL more effectually to provide for the execution of treaties for the protection of the owners of trade-marks.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That the circuit courts of the United States, concurrently and not exclusive of the courts of the several States and Territories, shall have and exercise the same jurisdiction to protect and enforce the rights of subjects of foreign nations with which the United States have made or may hereafter make treaties or conventions for the reciprocal protection of trademarks, as if the said foreign subjects were citizens of the United States. (Bill S. 501, Forty-first Congress, first session.)

This bill was indefinitely postponed by the Senate.

LEGISLATION FOR THE PROTECTION OF DOMESTIC TRADEMARKS AGAINST INFRINGEMENT BY FOREIGNERS.[edit]

On April 19, 1870, Mr. Banks, of Massachusetts, introduced in the House of Representatives a bill to prevent the importation from foreign countries of articles fabricated in imitation of and bearing the trademarks of articles of American manufacture.[11] This was referred to the Committee on Ways and Means and ordered printed, but does not appear to have been reported to the House. Its essential features are embodied in section 11 of the tariff act of 1897, as hereinafter noted. On April 21, 1870, Mr. Merrill, of Vermont, introduced in the Senate a bill in relation to fraudulent trademarks upon foreign watches, which provided — [12]

That no foreign watches or watch movements should be admitted to entry at the custom-houses in the United States, unless there shall be legibly and distinctly engraved or stamped upon the works or movements the maker's name or extinguishing trade-mark, and in connection therewith, and as a part thereof, the name of the place and country where manufactured; but existing trademarks of foreign manufacturers of watches need not be changed if they distinctly show that the watch movements are of foreign production. If any watches or watch movements of foreign manufacture shall be offered for entry at any custom-house in the United States which shall copy or simulate the name or trade-mark of any domestic manufacturer, they are to be forfeited to the United States.

This bill passed the Senate on May 3, 1870, was reported to the House of Representatives, and was referred to the Committee on Finance, but was not reported from that committee. Substantially the same bill passed both Houses as the act of March 3, 1871 (sec. £496, Rev. Stat.), and with an amendment making its provisions applicable to "any other articles of foreign manufacture," as well as " watches, watch cases, watch movements, or parts of watch movements," thus making it cover substantially what was intended to be covered by the bill introduced by Mr. Banks, above referred to, was reenacted in 1883 as a part of the act of March 3 of that year.

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In slightly modified form the same provision respecting articles of imported merchandise was reenacted as section 7 of the act of October 1, 1890, again as section 6 of the act of August 27, 1894, and yet again as section 11 of the act of July 24, 1897. This law as it now stands is as follows:

SEC. 11. That no article of imported merchandise which shall copy or simulate the name or trade-mark of any domestic manufacture or manufacturer, or which shall bear a name or mark which is calculated to induce the public to believe that the article is manufactured in the United States, shall be admitted to entry at any customhouse of the United States. And in order to aid the officers of the customs in enforcing this prohibition, any domestic manufacturer who has adopted trade-marks may require his name and residence and a description of his trade-marks to be recorded in books which shall be kept for that purpose in the Department of the Treasury, under such regulations as the Secretary of the Treasury shall prescribe, and may furnish to the Department facsimiles of such trade-marks, and thereupon the Secretary of the Treasury shall cause one or more copies of the same to be transmitted to each collector or other proper officer of the customs. (S. T. D. (1897), p. 669.)

It is to be noted that this law provides for the protection of owners of trademarks against interference with their rights by infringers located in foreign countries and against would-be infringers located in this country in so far as importation by them of goods manufactured in a foreign country and hearing the infringing mark, but does not give the same protection to the subjects or citizens of any foreign country.

It was evident from the introduction of so many bills having reference to the protection of trademarks, both foreign and domestic, that, at least in some lines of manufacture, American manufacturers had begun to feel the need of some protection for their trademarks against infringers located in foreign countries. At that time (1870) the question of a much-needed revision of the patent and cop37right laws was before Congress, a bill for the revision of such laws having been introduced in the House of Representatives by Mr. Jenckes, of Rhode Island, from the Committee on Patents, on April 7. This bill having been recommitted, the Committee on Patents again reported it with certain sections added, providing for the registration and protection of trademarks. These sections (72 to 84, inclusive), with some amendments, were adopted and were subsequently referred to as the trademark law of 1$70 (secs. 4937-4947, Rev. Stat)[13]

It is clear from the discussions of these sections of the bill[14] that it was supposed that the power of Congress to provide for the registration and protection of trademarks was derived from the clause of section 8 of Article I of the Constitution, which provides for the promotion of "the progress of Science and Useful Arts by securing for limited Times to Authors and Inventors the exclusive Right to their Respective Writings and Discoveries." Nowhere in the discussion is found any reference to the clause of section 8, which gives Congress the power "to regulate Commerce with foreign Nations and among the several States and with the Indian Tribes." So far as appears from the discussion of the bill, trademarks were regarded as analogous to patents and copyrights and their relation and importance to commerce appear to have been little understood. The act permitted the registration of trademarks by person or firms domiciled in the United States who were entitled to their exclusive use or who intended to adopt and use them, without limitation to the kind of com-

  • [Page 101]

-merce in which they wore used or intended to be used, and while the act so far as the protection to be given to registered trademarks added practically nothing to the existing law beyond giving a kind of governmental sanction to the use of trademarks, a stop toward a provision for their adequate protection, it provided for giving this sanction to trademarks used in commerce within a State, as well as those used in such commerce as, under the Constitution, was within the power of Congress to regulate.

Under this act and notwithstanding that it added little to the existing law so far as protection of trademarks was concerned, a considerable number of trade-marks were registered, 121 in 1870, 486 in 1871, 401 in 1872, 493 in 1873, 559 in 1874, 1,136 in 1875, and 959 in 1876. Previous to the passage of this law, 17 marks of foreigners entitled to protection under the provisions of the treaties with Russia and Belgium, above referred to, had been deposited in the Patent Office.

TRADEMARK CONVENTION WITH FRANCE.[edit]

Subsequent to the introduction of the first of the above bills regarding the protection of trademarks, introduced April 9, 1869, by Mr. Trumbull, a convention concerning trademarks was concluded under date of April 16, 1869, with France.[15] The substance of this convention is as follows:

ARTICLE I. Every reproduction in one of the two countries of trademarks affixed in the other to certain merchandise to prove, its origin and quality is forbidden, and shall give ground for an action for damages in favor of the injured party, to he prosecuted in the courts of the country in which the counterfeit shall be proven, just as if the plaintiff were a subject or citizen of that country.
The exclusive right to use a trademark for the benefit of citizens of the United States in France, or of French subjects in the territory of the United States, can not exist for a longer period than that fixed by the law of the country for its own citizens.
If the trademark has become public property in the country of its origin, it shall lie equally free to all in the other country.
ART. II. If the owners of trademarks, residing in either of the two countries, wish to secure I heir rights in the other country, they must deposit duplicate copies of those marks in the Patent Office at Washington, and in the clerk's office of the Tribunal of Commerce of the Seine, at Paris.

TRADEMARK CONVENTIONS WITH OTHER FOREIGN NATIONS.[edit]

Subsequent to the passage of the act of 1870, under date of November 25, 1871, a trademark convention, practically the same in terms with that concluded with France,was concluded with Austria-Hungary.[16] December 11, 1871, a similar convention was concluded with Germany.

March 28, 1874, a declaration respecting previous treaty stipulations in regard to trademarks with Russia was signed.[17] March 5, 1875, a new treaty of commerce and navigation was concluded with Belgium,[18] containing as article 15 a restatement of the stipulation regarding the reciprocal protection of trademarks contained in the additional article concluded in 1868.

THE TRADE-MARK LAW OF 1876.[edit]

On April 16, 1876. Mr. Conkling introduced in the Senate a bill entitled "A bill to punish the counterfeiting of trademark goods

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and the sale or dealing in of counterfeit trademark goods." This bill having passed the Senate, was reported to the House of Representatives. In reporting this bill from the Committee on Patents, to whom it had been referred, Mr. Sampson, of Iowa, said:[19]

It is generally conceded that there is not at present sufficient protection to trademarks. The public generally, the honest manufacturers, and honest dealers throughout the country are being constantly swindled by counterfeit trade-marks. The law of 1870, providing a general system for the registration of trade-marks and designed to afford better protection by giving right of action in United States courts to recover damages for counterfeiting and providing the remedy by enjoining counterfeiters, has not proved sufficient. Worthless parties engaged in such dishonest practices are not prevented by civil actions. A judgment for damages has no terrors for them. If enjoined, some relatives soon own the goods and the business goes on. The plaintiff in such action (the measure of damages being the profit) has to depend mainly on the testimony and books of the defendant; and it is found generally that he who will counterfeit will testify falsely to avoid the consequences. Thus the action for damages amounts to but little.
Nearly 400 of the leading manufacturers, merchants, and dealers of New York, Boston, and Philadelphia have petitioned Congress very earnestly at this session to enact such a law as that contained in this Senate bill; and they state their reasons in this forcible language:
"The use of trade-marks on every species of merchandise and manufactures, both foreign and domestic, has greatly increased with the expansion of modern trade and commerce, and has become a powerful interest throughout the United States of America.
"The nefarious but lucrative business of pirating or counterfeiting genuine trademark goods has too long nourished unchecked to the incalculable injury of every consumer, of every honest merchant, manufacturer, and trader, and has extensively multiplied costly and tedious litigation.
"No United States statute yet exists providing penal remedies to punish the counterfeiting of trade-mark goods or the sale or dealing in the same. The evils and injuries to long-suffering commercial and manufacturing interests consequent upon this omission imperatively demand prompt relief and a speedy application of searching remedies.
We therefore respectfully petition for relief, and request that Senate bill No. 846, introduced into the Senate on the 18th of May, 1876, entitled 'A bill to punish the counterfeiting of trade-mark goods and the sale or dealing in of counterfeit trademark goods,' may be made law at this session of Congress."

This bill as amended, having passed both Houses, was approved August 14, 1876.[20]

THE TRADEMARK LAW AS DEFINED BY THE ACTS OF 1870 AND 1876.[edit]

This act, whatever may be its defects, supplied what was lacking in the act of 1870; that is, provided a protection for trademarks beyond that given by the common law as understood and applied by the courts, by making the willful counterfeiting of registered trademarks a misdemeanor punishable by fine or imprisonment. The trademark law as it then stood, taking the two acts, that of 1870 and that of 1876 together, was in its essential features the law suggested by Jefferson in his report in 1791, differing from the law then suggested in one important particular only, but one which was of such importance as to render it impossible to uphold the law as valid and constitutional; that is, in not being limited in its application to the registration and protection of trademarks used in commerce which Congress, under the Constitution, had the power to regulate. In these essential features, making full protection conditional upon registration of the mark, and making the infringement of a registered mark a misdemeanor punishable by fine or imprisonment, the trademark law as it then stood

  • [Page 103]

corresponded with the trademark laws of the foreign countries with which the United States had entered into treaty agreements respecting the protection of trademarks.

TRADEMARK CONVENTIONS WITH FOREIGN NATIONS.[edit]

Subsequent to the passage of the law of 1876 a declaration for the reciprocal protection of marks of manufacture and trade was concluded with Great Britain, October 24, 1877,[21] and on September 24, 1878, an agreement for the reciprocal protection of marks of manufacture and trade was concluded with Brazil.[22] These were substantially identical in form and contained substantially the same stipulations that were contained in the treaties and conventions with other foreign countries.

THE DECISION OF THE SUPREME COURT IN THE TRADEMARK CASES.[edit]

Criminal prosecutions being had under the statutes of 1870 and 1876 in the southern district of New York and the southern district of Ohio, and a difference of opinion having been certified to the Supreme Court on the question whether these acts of Congress on the subject of trademarks were founded on any rightful authority in the Constitution of the United States, the cases came before the court for review at the October term of 1879. (Trademark Cases, 100 U. S., 82.)[23] The court showed with admirable clearness that because of the distinction between patents and copyrights and trademarks, pointed out in the decision, the power of Congress to enact the law could not be derived from that paragraph of Article I, section 8, of the Constitution which relates to authors and inventors, since the right of ownership in trademarks is created by adoption and not by authorship or invention. Neither could the law be supported by the commerce clause of the same article and section of the Constitution, because it was not limited to commerce among the States, but, on the contrary, was extended to trademarks generally, embracing marks used wholly within a State. The court held that, because the act usurped jurisdiction over trademarks used wholly within a State, it was so far void that the court could not separate the good from the bad without creating a new law, different perhaps from that which Congress would have passed, and that therefore the whole law must fall. The court, however, said:

The question, therefore, whether the trade-mark bears such a relation to commerce in general terms as to bring it within Congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave undecided. (100 TJ. 8., 95.)

The court further said:

In what we have here said we wish to be understood as leaving untouched the

whole question of the treaty-making power over trade-marks, and of the duty of Congress to pass any laws necessary to carry treaties into effect. (Ibid., 99.)

EFFECT OF THE DECISION OF THE SUPREME COURT.[edit]

This decision of the Supreme Court caused great anxiety to trade mark owners, who sent many petitions to Congress; and great publicity was given to the subject by the press of the country.

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The scope of the decision was not understood, and within a few days after it was handed down, Mr. McCoid, of Iowa, introduced a joint resolution in the House proposing the following amendment to the Constitution:[24]

Congress, for promotion of trade and manufacture, and to carry into effect international treaties, shall have power to grant, protect, and regulate the exclusive right to adopt and use trade-marks.

The resolution was referred to the Committee on Manufactures, which reported it favorably December 11, 1879. A part of the report is as follows:

The business men of the world have awakened to the fact that manufacture and trade require national and international control and protection of genuine commercial signatures to identify and distinguish property made and marketed by cosmopolitan tradesmen.

On December 9, 1879, Mr. Armfield, of North Carolina, introduced in the House "A bill to authorize the registration of trademarks,"[25] which substituted for the first clause of the act of 1870, which made no distinction as to the use of the trademarks registered, the following:

Owners of trademarks used in commerce with foreign nations, or among the several States, or with the Indian tribes, provided such owners shall be domiciled in the United States, or located in any foreign country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States, may obtain registration of such trade-marks by complying with the following requirements.

The bill, as drawn, provided for a trademark bureau. It was referred to the Committee on Commerce, but does not appear to have ever been reported by the committee.

THE TRADEMARK ACT OF 1881.[edit]

On March 12, 1880, Mr. Hammond, from the Committee on the Judiciary, reported a bill as a substitute for the preceding resolution and bill. It was in substantially the form of the present law.[26]

The report accompanying the bill says:[27]

The bill seeks to reenact substantially the trade-mark legislation of 1870 (Rev. Stat, sees. 4937-4947, inclusive), save that it is confined to foreign and interstate commerce. Its theory is that, by thus separating them from interstate commerce, the objections of the Supreme Court as to constitutionality will be removed.

The bill passed the House April 27, 1880, was referred to the Committee on the Judiciary of the Senate April 29, 1880, and passed the Senate and was thereafter approved March 3, 1881.[28]

By an act approved August 5, 1882,[29] which was in the nature of an amendment to the act of 1881, provision was made for the registration "of any lawful trademark rightfully used by the applicant in foreign commerce or commerce with Indian tribes at the time of the passage of said act," notwithstanding any provision of the act which would otherwise prevent its registration.

This law has been in some way referred to in the following cases without its constitutionality being questioned: Menendez v. Holt (128 U.S., 514, 516), Ryder v. Holt (128 U.S., 525), Corbin v. Gould (133 U.S., 308). South Carolina v. Seymour (153 U.S., 353), Luyties v. Hollender (21 Fed. Rep., 281), Schumacher v. Schwencke (26 Fed. Rep.,

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818), Pratt M. Co. v. Astral O. Co. (27 Fed. Rep., 492, 493), Luyties v. Hollender (30 Fed. Rep., 632), United States v. Koch (40 Fed. Rep., 250), Hiram Holt Co. v. Wadsworth (41 Fed. Rep., 34, 36), Graveley t-. Graveley (42 Fed. Rep., 265), L. H. Harris D. Co. v. Stucky (46 Fed. Rep., 624), Brower v. Boulton (53 Fed. Rep., 389), Brower v. Boulton (58 Fed. Rep., 888, 890), Kohler M. Co. v. Beeshore (59 Fed. Rep., 572,575), Jaros Hygienic Underwear Co. v. Fleece Hygienic Underwear Co. (65 Fed. Rep., 424), Burt v. Smith (71 Fed. Rep., 161), Saxlehner v. Eisner & Mendelson Co. (88 Fed. Rep., 61).

The number of registrations made under this law by years is as follows: For 1881, 834; for 1882, 947; for 1883, 902; for 1884, 1,021; for 1885, 1,067; for 1886, 1,029; for 1887, 1,133; for 1888, 1,059; for 1889, 1,229; for 1890, 1,415; for 1891, 1,782; for 1892, 1,737; for 1893, 1,677; for 1894, 1,806; for 1895, 1,829; for 1896, 1,813; for 1897, 1,671; for 1898, 1,238; for 1899, 1,649.

TRADEMARK ARRANGEMENTS WITH FOREIGN NATIONS.[edit]

Since the approval of the trademark act of 1881, the following diplomatic arrangements respecting the reciprocal protection of trademarks have been entered into between the United States and foreign nations: A treaty with Serbia for facilitating and developing commercial relations, concluded October 2-14, 1881, in which article 12 provides for the reciprocal protection of trademarks;[30] a declaration with Italy for the reciprocal protection of marks of manufacture and trade, concluded June 1, 1882;[31] a convention with Spain for securing reciprocal protection for trademarks and manufactured articles, concluded June 19, 1882;[32] a convention with Belgium for securing reciprocal protection for trademarks and trade labels, concluded April 7, 1884;[33] a convention with Denmark for the reciprocal protection of trademarks and trade labels, concluded June 15, 1892;[34] a treaty of commerce and navigation with Japan, concluded November 22, 1894,[35] of which article 16 relates to the protection of trademarks, and a convention with the same country securing immediate reciprocal protection for trademarks, concluded January 13, 1897.[36] In addition, diplomatic notes with regard to the reciprocal protection of trademarks were exchanged with Netherlands under dates of February 10 and 16, 1883,[37] and with Switzerland under dates of April 27 and May 14, 1883.[38]

The United States under date of May 30, 1887, adhered to the International Convention for the Protection of Industrial Property concluded between certain countries at Paris, March 20, 1883,[39] by such adhesion entering into treaty agreements for the reciprocal protection of trademarks with the following countries: Belgium, Brazil, Dominican Republic, France with Algeria and the French colonies, Great Britain, Italy, Netherlands, Norway, Portugal, Servia, Spain, Sweden, Switzerland, and Tunis. Since the adhesion of the United States, Denmark with the Faroe Islands, New Zealand, and Queensland, Japan, the Dutch East Indies, Surinam, and Curacao have adhered to this convention, and its provisions are therefore effective between the United States and these countries also.

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PRESENT TRADEMARK LAWS OF THE STATES.[edit]

Since the approval of the act of 1881 many of the separate States of the United States have adopted laws providing for the registration and protection of trademarks or have amended such laws previously adopted. The State laws, including those adopted prior to 1881, are thus given in a recent publication:[40]

The following States provide by law for the registration of trademarks by any person, or association, or union of workingmen, and for the punishment by fine or imprisonment of infringers:
Delaware, act of March 29, 1893.
Georgia, act of December 20, 1893.
Idaho, act of March 12, 1897.
Illinois, act of June 13, 1895.
Indiana, acts of March 6, 1891, and March 8, 1897.
Iowa, act of March 26, 1892.
Louisiana, act of July 8, 1898.
Maine, act of March 28, 1893.
Maryland, act of April 4, 1892.
Massachusetts, act of June 4, 1895.
Michigan, act of May 24, 1895.
Minnesota, act of February 23, 1895.
Missouri, act of March 20, 1893.
Montana, Sander's Penal Code, 1895.
New Hampshire, act of March 13, 1895.
New Jersey, act of March 15, 1898.
Ohio, acts of March 30, 1892, and May 1, 1894; Revised Statutes, 1890.
Oklahoma, act of March 11, 1897.
Tennessee, act of February 3, 1897.
Utah, act of March 8, 1894.
Wisconsin, act of April 9, 1895.
The following States provide by law for the registration of trademarks by any person and for the punishment of infringers by tine or imprisonment, but do not expressly provide by law for registration by associations or unions:
Arkansas, act of March 31, 1883.
California, act of March 12, 1885; chapter 157 of Laws of 1897.
Colorado, Hill's Annotated Statutes, 1891.
Connecticut, Statutes of 1888, chapter 93 of Laws of 1895.
Nevada, Statutes of 1885.
North Dakota, act of March 9, 1891.
Oregon, Hill's Annotated Laws, 1892.
Washington, acts of February 21, 1891, and March 20, 1895.
West Virginia, Code of 1897, act of 1882.
The following States provide by law for the registration of trademarks only by associations or unions of workingmen and for the punishment of infringers by fine or imprisonment:
Kansas, act of March 11, 1891.
Kentucky, acts of April 16, 1892, and March 8, 1894.
Nebraska, Laws of 1891, chapter 15.
Pennsylvania, act of May 21, 1895.
South "Dakota, act of March 7, 1890.
The following States provide by law for the registration of trademarks only by manufacturers or dealers in beverages in bottles, etc., and for the punishment of persons who make fraudulent use of the bottles, etc., so marked:
Alabama, act of February 14, 1891.
New York, act of May 27, 1894, R.
Rhode Island, act of May 13, 1892.
Virginia, act of February 17, 1890, and February 12, 1892.

PROVISIONS OF THE TRADEMARK ACT OF 1881 — THE COMMON LAW OF TRADEMARKS.[edit]

The act of 1881[41] provides for the registration of trademarks used in commerce with foreign nations or with the Indian tribes and by pro-

  • [Page 107]

viding that the owners of trademarks domiciled in any foreign country which by treaty, convention, or law affords similar privileges to citizens of the United States may register their marks gives effect to the treaty obligations which the United States has entered into with foreign countries so far as the registration of trademarks is concerned. It also provides that the registration of a trademark shall be prima facie evidence of ownership. In other respects it practically does nothing more than give effect to the common law of trademarks as it existed at the time of its enactment, created by the courts of Great Britain and the United States, indefinite and indistinct as a law must be which has to be ascertained from a mass of decisions rendered by many different courts, man}' of them contradictory in their dicta on the question and all of them concerned with doing justice in the particular case before them rather than with legislating into existence a distinct and definite law. The following statement, taken from the decision of Judge Potter in the case of Gillott r. Esterbrook in 1864 (Cox American Trademark Cases, 340), may be accepted as indicating the difficulty in ascertaining the law with respect to trademarks, the decision being subsequently affirmed on appeal by the supreme court of New York. (47 Barb., 455; Cox Am. Trademark Cases, 363.) This statement is as follows:

The law in relation to trademarks in late years has been much discussed in our courts, still, however, leaving many questions unsettled, so that what is proper to be done in cases of this kind depends more; or less upon the circumstances that attend them. The questions presented in the adjudicated canes have been variant in their features, and partially so conflicting that we are compelled to look at a few general principles that seem to be settled, and then resort to analogies, in order to determine from them what should be held in the particular case, and then deal with it according to the nature of its peculiar circumstances.

See also the case of Dixon Crucible Company v. Guggenheimer, above referred to.

DECISIONS FROM WHICH THE COMMON LAW OF TRADEMARKS IS DETERMINED.[edit]

From a consideration of a few of the early decisions in trademark cases the difficult}' in determining even the fundamental principles of the so-called common law of trademarks will be apparent.

In the case of Blanchard v. Hill, above referred to,[42] decided by Lord Hardwicke in 1742, a motion having been made on behalf of the plaintiff for an injunction to restrain the defendants from making use of a trademark which had been appropriated by the plaintiff, the learned chancellor said:

I do not know any instance of granting an injunction here to restrain one trader from using the same mark with another, and I think it would be of mischievous consequence to do it.

This decision, which, in effect, held that there could be no right of property in a trademark, stood as determining the law of trademarks for nearly a hundred years. Prior to that time the owner of a trademark was compelled to establish and vindicate his right at law. His right to his mark was not protected by a court of equity.

Not until the case of Millington v. Fox, above referred to,[43] was decided in 1838, was it held by any court in Great Britain or the United States that there could be a property right in a trademark. And it should be said that the doctrine enunciated in that decision

  • [Page 108]

was not at once universally accepted, the Master of the Rolls in 1842, in the case of Perry v. Trufitt (6 Beav., 66), stating that it did not eeem to him that a man could acquire a property merely in a name or mark, and, commenting on the case of Millington v. Fox, said that "I am not aware that any previous case carried the principle to that extent." Judge Robertson, of the superior court of the city of New York, in his decision in the case of Corwin v. Daly (7 Bos. , 222, Cox Am. Trade-mark Cases, 265, 1860), states that this doctrine was repudiated in Crawshay v. Thompson (4 Man. & Gr., 357, Cox Manual, 72, 1842), and even asserts that it will be found on examination that no such doctrine was sustained in the case of Millington v. Fox. The learned judge quotes from the decision of the Vice-Chancellor of England in Collins Co. v. Cowen (3 Kay & J., 428, Cox Manual, 152, 1857), the assertion that "There is no such thing as property in a trademark as an abstract name," and says that " This principle will be found not to have been swerved from in any case." The case of Millington v. Fox is, however, generally taken to have been the case in which the now universally accepted doctrine of a property right in a trademark was for the first time announced. Certainly that doctrine was not announced in any prior decision. The change in the attitude of the courts toward trademarks and the desirability of statute law on the subject is well stated by the supreme court of California in the case of Derringer v. Plate (29 Cal., 292, Cox Am. Trademark Cases, 324, 1865), in the following language:

It was at one time thought that no man could acquire a right to a particular trademark (Blanchard v. Hill, 2 Atk., 284), but as the true interests of manufacturers and commerce were more fully developed and appreciated the right of property in trademarks was recognized, and the doctrine has been uniform for many years that the manufacturer or merchant does possess an exclusive property in the trademark adopted and used by him. The right of property does not in any manner depend for its inceptive existence or support upon statutory law, though its enjoyment may be better secured and guarded, and infringements upon the rights of the proprietor may be more effectually prevented or redressed by the aid of the statute than at common law. Its exercise may be limited or controlled by statute, as in case of other property, but the title to the good will of a trade, which it in some respects resembles, the right of property in a trademark accrues without the aid of the statutes.

And if the decisions respecting the fundamental proposition on which the law of trademarks rests are contradictory, it is to be expected that the decisions on other questions would be also contradictory and conflicting. Such is the case. On perhaps no question have the decisions been more conflicting than on the question of what may constitute a trademark. As late as 1869, in the case of Ferguson v. Davol Mills (2 Brewster, 314, Cox Am. Trademark Cases. 516), it was not only- stated that "the simplest case of a trademark is the name and address of the claimant," but it was held that " it is absolutely requisite that a device or symbol should perform the office of a finger board; should indicate the name and address of the manufacturer to invest it with the attributes and entitle it to the protection of a trademark." This decision, though unfortunately followed in a number of cases, is to-day recognized as radically and absolutely incorrect, as is clear from the decision of the Supreme Court in Manufacturing Co. v. Trainer (101 U. S., 51), in which it is said that "a trade-mark may consist of a name, symbol, figure, letter, form, or device." The mere name and address of a person is so far recognized as not in itself a trademark in the technical sense that it is expressly excluded from registration as such in the United States by the trademark act of March 3, 1881,

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and in Great Britain by the law of 1875, as well as by the law at present in force. And it is to-day well settled that neither the name nor address is requisite to the validity of a trademark. On many other questions the decisions are equally conflicting.

CLASSES OF TRADEMARK CASES — UNFAIR COMPETITION.[edit]

From a consideration of the cases involving the right to use a trademark which have been brought before the courts, it is clear that there are two clearly defined classes of these cases; first, cases of unfair competition; and, second, cases in which the question of the property right in the mark is involved between two persons who have independently adopted and used the same mark. The first class of cases presents little difficulty. It is obvious that the counterfeiting or imitation of a mark known to be the distinguishing mark borne by the goods of a particular trader is attended by injurious consequences of a serious character from two points of view. The rightful owner of the mark suffers by the diminished sale of his goods, and incurs also the risk of serious injury to the reputation of his goods, since the goods placed upon the market under a false mark are almost invariably inferior in quality to those sold by the rightful owner. And the purchaser is injured as well, for the public is induced by the false mark to believe that it is purchasing something different from what it actually receives.

The deliberate and willful imitation of the mark known to belong to another is so plainly a fraud upon his rights that from very early times the courts have not hesitated to protect the rightful owner against those who knowingly counterfeited or imitated his mark. It does not, however, appear, as has been above stated, that the right of the owner of the mark to the protection of the courts of equity was recognized until long after his right to the protection of the law courts had been recognized. But it is clear that the remedies which could be afforded by even the courts of equity were far from adequate to effectually prevent or redress the infringement upon the rights of the proprietor of a trademark. An award of damages against a willful infringer is clearly an inadequate punishment of the fraud of which he has been guilty, and is not sufficient to deter others from infringement. An injunction against further infringement is not greatly feared by those who deliberately counterfeit another's mark, and at best is effective only as to the future and as to the persons specially named in it. The willful counterfeiter of another's mark is entitled to no better treatment than the criminal who takes the goods of another. This is now widely recognized, as is evident from the fact that in all foreign countries which have trademark laws, and indeed in nearly all of the States of the United States, the willful infringement of a trademark is by express provision of statute law made an offense punishable by fine and imprisonment. Yet under the common law of trademarks, as it is understood to-day by the United States courts, the owner of a trademark is afforded no protection against infringers, save that of damages and injunction.

To entitle the user of a mark to such remedies as may be afforded under the common law, it is, generally speaking, necessary only to show that the infringer has knowingly copied or imitated his mark, whatever that mark may be. It is of comparatively little importance in what the mark may consist, whether it be a trademark in the tech-

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-nical sense or the mere dress and appearance of an article as put upon the market, a word which primarily was clearly descriptive, or even the name of the manufacturer or dealer. The question is as to the intent of the infringer, and if the circumstances show that the intent was fraudulent, the rightful user of the mark is entitled to damages and injunction.

It is clear that cases of this class, cases of unfair competition, are reached by the common law of trademarks, but it is equally clear that the common-law remedies are insufficient to adequately protect the rightful owner of the mark.

CASES INVOLVING THE PROPERTY RIGHT TO A TRADEMARK.[edit]

To the other class of cases, and such cases often arise and are usually of even more importance than cases of unfair competition, belong those in which it being found that two manufacturers or dealers have adopted and used the same or similar marks, each without knowledge of use of the mark by the other, suit is brought by the party claiming the better right to its exclusive use to enjoin the other from using it. There is in such cases no element of fraud, but it is evident that it may be of quite as much importance to the legal owner of the mark to prevent its use by another who may have used it in good faith as to prevent its fraudulent use by others.

That a manufacturer or dealer engaged in a particular line of business should unintentionally select as a mark for a particular class of goods sold by him the same mark which has previously been used by another for the same class of goods as a matter of fact has repeatedly happened. So many instances of the adoption by two or more traders of substantially the same mark were found when the trademark registration act of 1875, of Great Britain, went into effect that it was found necessary to frame a rule known as the "three-mark rule," under which identical or similar "old marks," i. e., marks in use before the date of the act, might be registered by different persons up to the number of three, but not more; the rule providing that if the mark had been used bona fide by more than three persons it must be treated as common to the trade and no registration at all allowed. This seems remarkable without a clear understanding of what sort of devices are used as trademarks.

It is the exception that there is anything novel or elaborately artistic about a trademark. There is seldom anything which involves study or invention or skill of any sort in the trademark itself. The larger proportion of those in use consist of a single simple device or a single Avord. It is generally considered that a mark to be effective for its purpose should be as simple and striking as possible, should either consist of or have as a prominent feature some representation or word which will be readily caught by the eye of the purchaser and retained in his memory, so that when he comes to make a second purchase he will look for and readily recognize that particular mark. Such a trademark is, for instance, the representation of a star, an arrow, anchor, crescent, crown, cross, diamond, seal, triangle, or the word "star," "arrow," etc.

The representation of a star or the word "star" has been registered in the United States Patent Office as a trademark for nearly every recognized class of goods, having been registered nearly 400 times,

  • [Page 111]

indicating that, leaving out of consideration reregistrations to the same owner, made necessary by a change in the law, several hundred manufacturers and dealers have adopted and used that mark on some class of goods. In about 150 instances, the representation of an anchor or the word anchor" has been registered.

It will, of course, be understood that a star or an anchor or any other mark may be used by manufacturers of or dealers in different classes of goods without conflict. For instance, the use of a star as a mark for tobacco does not conflict with the use of a star as a mark for matches or dress braid. It is only when two persons put upon the market goods of the same class bearing the same mark that confusion in the mind of the public is liable to be caused or purchasers are deceived.

Comparatively few such cases arose under the commercial conditions which prevailed up to the middle of the present century. No doubt under the conditions then prevailing the same mark was used by different manufacturers and dealers, but from the fact that the cost of transportation precluded the sending of goods any considerable distance from the locality of their production, competition was necessarily restricted to those who necessarily knew the trademarks used by their rivals in trade. Whether the holding in the case of Blanchard r. Hill, above referred to, was correct or not was of comparatively little importance at the time that decision was rendered or for many years thereafter.

As manufacturing increased and the facilities for transportation were improved, competition became less restricted and it was found that the goods of a manufacturer or dealer must be sold in competition not only with others in his immediate locality, whose marks were well known to him and to whom his marks were well known, but with those located at a great distance, even in a foreign country, of whose very existence he was not aware and of whose trademarks he could know nothing. In the wider market made accessible by the reduction in the cost of transportation, not only was the value of a distinctive trademark vastly increased by reason of the increased sale of goods, but the possibility that such mark had been used by others was greatly increased. It therefore happened that the question of the right of ownership in a distinctive mark between those who had adopted and used it in good faith and had made it valuable was frequently raised before the courts of England and the United States. With no statutory provision to guide them, without precedent to sustain them, in the face of a decision which had stood unchallenged for nearly a century, the courts of England and the United States, recognizing the necessities of the case, met these necessities by creating the so-called common law of trademarks. First, it was necessary to hold that there could bo a property right in the exclusive use of a particular mark. It was so held in Millington v. Fox, above referred to, although to so hold was contrary to the holding in Blanchard v. Hill. It was then necessary to determine how this property right could be acquired, under what circumstance it was lost and what kinds of marks could and what could not be the subject of such property right.

THE NECESSITY FOR REGISTRATION OF TRADEMARKS.[edit]

The way in which this so-called common law of trademarks arose and the reasonable objections which exist to this law as it is applied to

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this class of cases, is well stated in the dissenting; opinion of Judge Robertson, of the court of appeals of New York, in the case of Burnett v. Phalon (9 Bos., 192, 5 Abb. Pr. R. N. S., 212, 3 Keyes, 594, Cox Am. Trade-mark Cases, 376, 1867), in which, after referring to the common liability of every one who palmed off upon the public his commodities as those of another man, to the deceived customer, and indirectly to the supplanted competitor, he says:

Equity seized on jurisdiction to prevent repetitions of the wrong and, with its customary eagerness to amplify such jurisdiction and model the relief granted by it to every phase of such wrong, created the doctrine of what are called trademarks. In doing so, it has nearly established a common law copyright of perpetual duration, permitting an injunction without a trial at law, calling upon the defendant for an account of his profits, and even attempting to reach what are claimed to be instruments prepared for future fraud. This may be a very healthful jurisdiction, but, without great care, its searching character may be made an instrument of wrong. Much is said of the injustice of allowing one man to avail himself of the skill and expenditure of another by false representations, which is well founded; but where, instead of using the name of the owner or vendor, strange devices and insignia are employed to indicate such ownership or source, which do so but ambiguously, and require considerable familiarity and experience with them to connect them therewith, no great sympathy is created for those using such devices.
Were they the subjects of copyrights, or other modes of warning mankind against trespassing on a settled right, there would be greater justice in punishing the trespasser; but the most innocent may be caught unwarily in a litigation where a word is employed as a device originating in some measure from the materials used in forming a composition, as in this case, where one of the plaintiffs admits that he framed Cocaine as a word, and that it was suggested by the cocoanut oil employed in the manufacture of the article, while the discoverer of the word Cocoine claims that is a word framed according to the genius of the French language, to express the extract of that oil.

While it is a general principle of the common law that a property right can not be acquired without notice of such right, and trespassers can not be held liable unless they have reasonable notice of such claim, particularly if the thing in which the property right is one which is not to be necessarily presumed to be the property of another, the courts were compelled" to hold, not only that the user of a trademark acquired by such use a right to the mark, but that such right was an exclusive right and could be enforced against another who used the mark without actual notice of the claim of right. That the notice, which consists merely in the use of the mark on goods is in many cases, particularly to others located at a great distance, not actual notice of the claim of the first user to the exclusive property in the mark, has been found to be a fact in many cases. To hold that the mere use of the mark is a sufficient notice to warrant the courts in depriving another who never saw, and from the circumstances of the case could not have seen, the goods bearing the mark, is recognized by Judge Robertson as seriously objectionable and undoubtedly may, and frequently does, work a great hardship. Yet as the common law did not provide any way other than use of the mark on goods by which notice could be given of the claim of exclusive property in the mark, it was necessary in order to hold that trademarks could be the subject of a property right that such notice was sufficient, whatever of hardship such holding might involve.

The right of property was, however, limited by the courts to marks which were of an arbitrary character, distinctly different from those which it must be presumed would naturally be used by others who produce or deal in the class of goods to which the mark is applied. As was said by the United States Supreme Court in the case of Canal Co. v. Clark (13 Wallace, 311), a case which arose under the common

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law, quoting from the opinion of Judge Duer, in the case of Amoskeag Mfg. Co. v. Spear (2 Sandf., S. C., 599):

(One) has no right to appropriate a sign or symbol which, from the nature of the fact which it is used to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose.

TRADEMARK LEGISLATION IN GREAT BRITAIN.[edit]

The fact that the remedies afforded by the common law were insufficient to adequately protect the owners of trademarks from willful fraudulent use of their marks by others led in Great Britain to the adoption of the merchandise marks act of 1862 which provided that —

Every person who, with intent to defraud, or to enable another to defraud, any person, shall forge or counterfeit, or cause or procure to be forged or counterfeited any trademark * * * shall be guilty of a misdemeanor,

and provided that every person found guilty of such misdemeanor should be liable to punishment "by imprisonment for not more than two years with or without hard labor or by fine, or both by imprisonment with or without hard labor and fine."

This statute supplied, as far as Great Britain was concerned, what was lacking in the common law as to protection of trademarks against willful infringers; that is, those who had actual knowledge of the use of a particular mark by its owner; and deliberately and with intent to defraud made use of such mark. Nothing more was needed so far as the cases of unfair competition in which actual knowledge of prior use of the mark could be proved were concerned. It did not reach the cases in which such actual Knowledge could not be proved, since it provided no means by which the owner of the mark could give such notice, "such warning against trespassing on a settled right," that others could be legally presumed to have knowledge of his claim to the exclusive property in his mark and for the same reason it was not calculated to give any relief in the second class of cases above referred to, those in which there was no knowledge by the latter user of the claim of the first user to the property right in the mark and no intent to defraud.

Under the law as it then stood in Great Britain, it was almost impossible for a manufacturer to ascertain whether any particular mark which he might wish to adopt as a distinguishing mark for his goods was one which he was free to adopt and make his own or had been already appropriated. He could not be certain that after he had used a mark for a considerable time and had made it valuable, he would not be compelled to yield his right to its use, and with it in great part the business which he had built up, to some one whose use of the mark perhaps in a merely local market was prior in date. The same difficulties were found to exist in this country with the difference that at the time there was no statute punishing willful infringement of a trademark.

These difficulties led in Great Britain in 1875 to the adoption of an act which not only created an office for the registration of trademarks and permitted owners of trademarks to register their marks, but made such registration essential to the protection of such marks by the courts. The first section of this act is as follows:

1. A register of trade-marks as defined by this act and of the proprietors thereof shall be established under the superintendence of the commissioner of patents, and from and after the first day of July, one thousand eight hundred and seventy-six, a
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person shall not be entitled to institute any proceeding to prevent the infringement of any trademark as defined by this act until and unless such trademark is registered in pursuance of this act.

In thus adopting a compulsory registration law Great Britain was following the example of other commercial nations, all of the more important European countries having adopted prior to that date, some of them long prior thereto, similar laws. In some of these countries not only is registration of trademarks required as a prerequisite to the recognition ot his legal right to its exclusive use, but registration, which is in this country public notice of the claim of an exclusive right to a particular mark and nothing more, is considered of such importance that the first to file the mark for registration is by law the owner of the mark. Such laws, or which that of Germany[44] is a good example, are known as attributive laws, while that of France[45] under which registration, though necessary to obtain the full benefit of the law, is not essential to ownership, is, like the United States law so far as that law can be said to afford any protection to trademarks, known as a declaratory law.

ADVANTAGE OF REGISTRATION OF TRADEMARKS TO THE PUBLIC.[edit]

The necessity and advantages to the public of providing for the registration of trademarks is well set forth in the explanatory statement made by the Ministers of Justice and of Commerce, etc., and annexed to a bill respecting trademarks presented to the chamber of the States-General of the Netherlands in 1879, which bill was subsequently passed and became the law of May 25, 1880, of the Netherlands, as" follows (translation given in a commercial report No. 12 of 1879, presented to the British Parliament):

The State should afford an opportunity to the public to acquire authentic information with regard to those marks, for the exclusive right to which application may have teen made. The means afforded for depositing and reporting marks in places accessible to the public conduce to this object. By this means the precise nature of the mark itself, as well as the date from which the general employment of such work ceases to be allowed, will be exactly determined. In this way it will be possible for persons interested to prove their right in a simple and inexpensive manner, while other persons can secure themselves against the unintentional assumption of a mark similar to one already used by another person.

PROTECTION TO TRADEMARKS UNDER THE ACT OF 1881.[edit]

The trademark act of March 3, 1881, is not only merely declaratory in that it does not make the right of property in any trademark depend for its inceptive existence or support upon the requirements contained therein, but, as has been above pointed out, it adds nothing to the common law so far as concerns the prevention or redress of infringements of trademarks registered in compliance with its provisions. The law thus contains nothing which is effective to induce, much less compel, the owners of trademarks to register them. It gives at most a mere color of protection. It provides a means by which owners of certain trademarks may, if they choose, give notice of their claims to an exclusive right in such marks, warning mankind against trespassing upon such rights, but does not make such notice effective to give the registrant any substantial advantage against infringers which he may not have without registration. It permits registration without requiring it.

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Further, this act provides for the registration only of trademarks used in commerce with foreign nations or with the Indian tribes, not even permitting owners of trademarks used in the internal commerce of this country to give notice to their claim of an exclusive right in their marks, to warn others against trespassing upon such rights. As was pointed out in the explanatory statement made by the Ministers of Justice and of Commerce, etc. , of the Netherlands, above referred to, this notice is of distinct importance to the general public. In fact, it is of quite as much importance as to the owner of the mark, of so much importance that the justice of holding a mark to be the exclusive property of such owner as against another who uses it without notice has been seriously questioned. (See the dissenting opinion of Judge Robertson in Burnett v. Phalon, above referred to.)[46]

CONSTITUTIONAL, POWER OF CONGRESS WITH KE8PECT TO TRADEMARKS.[edit]

That Congress has no power under the Constitution to provide for the registration or protection of trademarks used in commerce carried on wholly within one of the States of the Union has been decided by the Supreme Court in the Trademark Cases (100 U. S., 82).[47] But that court has not held that Congress is without power under the Constitution to provide by law for the registration and protection of trademarks used in commerce among the several States. That trademarks used in such commerce, but not in commerce with foreign nations or with the Indian tribes, are much more numerous than the marks entitled to be registered under the act of 1881 can not be doubted. The commerce of the United States with foreign nations, so far as manufactures are concerned (and it is to be remembered that trademarks are practically not used to any considerable extent except upon manufactures), has, up to very recent years, been inconsiderable in comparison with the commerce in manufactures among the several States. That trademarks are used in interstate commerce to a very great and rapidly increasing extent is apparent to anyone who has considered the subject. Even if it could be assumed that all trademarks entitled to registration under the act of 1881 — that is, trademarks used in commerce with foreign nations and with the Indian tribes — were registered, it is evident that the register of trademarks, which had become by adoption and use the subject of an exclusive property, would be far from complete and would not enable the public to acquire authentic information as to the marks in use, such as would enable persons to secure themselves against the unintentional assumption of a mark similar to one already used by another. While it may be that even to provide for the registration of marks used in interstate commerce would not result in placing upon the register all marks which have become the subject of an exclusive property, since no doubt some marks are used in commerce which is carried on exclusively within a single State, there can be no doubt that it would result in making the register far more nearly complete, and it is believed would make it practically complete, since with modern methods of transportation there is little difficulty in extending the trade in any manufactured article of substantial merit beyond the confines of the State in which its manufacture is carried on. In the interests of the public the owner of a trademark used in interstate commerce should be permitted to give notice of his claim of property in his mark by registering it in

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the Patent Office, if Congress has under the Constitution the power to provide for the registration of such marks.

That the power of Congress to provide for the registration of trademarks used in interstate commerce — and the same is true as regards trademarks used in foreign commerce and commerce with the Indian tribes — must be derived, if it exists at all, from the third clause of section 8 of Article I of the Constitution, which, read in connection with the granting clause, is as follows:

The Congress shall have power to regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes,

is clear from the decision of the Supreme Court in the Trademark Cases (100 U. S., 82), before referred to.[48] Whether Congress has this power depends, as stated by the Supreme Court in that decision, upon the question "whether the trademark bears such a relation to commerce in general terms as to bring it within Congressional control where used or applied to the classes of commerce which fall within that control."

THE RELATION OF TRADEMARKS TO COMMERCE.[edit]

That the trademark is generally accepted us bearing a close relation to commerce is evident from its very name. And this is true as well if the French term "mark of manufacture and of commerce" (marque de fabrique et de commerce) is considered. So, too, if the German term, "merchandise mark" (Waaren-zeichen) is considered. And though a trademark may be the property of a manufacturer as well as of a trader, he acquires and retains the right to the exclusive use of the mark only by placing his goods which bear it upon the market. In other words, the manufacturer can be an owner or a mark only by reason of the fact that he is necessarily a trader to the extent of disposing of his goods to others, whether those to whom he sells his goods are consumers or are traders who buy to sell again. The ownership of a mark is inseparable from its use in trade. No one who does not actually use the mark can have a right of property in it. It is like the good will of a business, absolutely inseparable from the business. Its close relation to commerce has been recognized by the courts from the earliest times. In the case of Blanchard v. Hill, before referred to, Lord Hardwicke in 1742 refused to recognize a right of property in a trademark on the ground that to do so would, in his opinion, "be of mischievous consequence;" that is, would have the effect of creating monopolies in trade; and while this view is to-day recognized to be wrong, the very fact that he considered that an exclusive right to a trademark would operate as a restraint upon trade shows that he recognized the intimate relation which the trademark bears to commerce. In one of the earliest trademark cases which came before a United States court, the case of Taylor v. Carpenter (circuit court U. S., dist. of Mass., 1846: 2 Wood & M. I.; Cox, Am. Trademark Cases, 32), the right to protection of a trademark is recognized as inseparable from the right to trade. In this decision Judge Woodbury says:

We are under treaty obligations to Great Britain and most other European powers to admit their merchandise on favorable terms and to allow their merchants to trade here as those of favored nations. But it would be a mockery of such provisions and enjoyments if we prevented them from selling their goods after arriving here
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(Ch. J. Marshall in Brown p. State of Md., 12 Wheat., 447), unless noxious to health or morals; or if we made onerous discriminations against them or prevented their receiving the proceeds of their goods or abstained from yielding protection against injuries to them or to their marks.

The report made by Thomas Jefferson, above referred to, is such as to leave no doubt of his opinion as to the intimate relation which the trademark bears to commerce, or as to the power of Congress under the commerce clause of the Constitution to provide for the registration and protection of trademarks used in interstate as well as foreign commerce.

The experience of the commercial world has demonstrated the practical importance, the absolute necessity to a proper regulation of commerce of the recognition of a property right in trademarks and the protection of this right. No country other than the United States has in its constitution a provision limiting the power of the General Government to regulate commerce generally, and all countries which have any pretension to commercial importance provide in their trademark laws for the registration and protection of the trademarks of their citizens or subjects without regard to the kind of commerce in which they are used, and no question of the constitutionality of such laws appears to have arisen in any foreign country. The universal recognition of the intimate relation between the trademark and commerce appears from the fact that in the laws of all of the more important countries the right of property in a trademark is accorded only to manufacturers or traders, is dependent on its use on the goods or its owner, and is transferable only with the transfer of the business in which it is used or so much of it as relates to the manufacture and sale of the goods to which it is applied. The right to the mark may be perpetual, provided the manufacture and sale of the goods continue. If the business is abandoned the right to the trademark ceases to exist.

TRADEMARK TREATIES.[edit]

All of the countries of the world which are large exporters of manufactured articles have found it of vital importance to their export trade to secure through diplomatic action from the countries in which their manufactures find a market assurance that the trademarks of their citizens or subjects should be protected against infringement. Great Britain, France, and Germany, in fact all ot the more important European nations, have been most energetic in their endeavors to secure such assurances from all countries in which there was opportunity for trade with the result that to-day the trademarks of the manufacturers and exporters of these countries are, under reasonable conditions of registration, entitled to protection throughout the world. The diplomatic agreements by which these advantages are secured are in many cases made a part of treaties of commerce and navigation, as in the treaties on these subjects concluded between the United States and Russia, 1868;[49] the United States and Belgium, 1868;[50] the United States and Germany, 1871;[51] the United States and Serbia, 1881;[52] and the United States and Japan, 1894,[53] and in many of the treaties between European nations and between European and other nations.

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SECTION 11 OF THE ACT OF JULY 24, 1897.[edit]

The Congress has distinctly recognized the relation of the trademark to commerce and the necessity for protecting domestic manufactures against infringements of their rights by foreigners by repeatedly reenacting, as has been above pointed out, the law which now stands as section 11 of the act of July 24, 1897, under which is prohibited the admission to entry at any custom-house of the United States of any articles of imported merchandise which copy or simulate the name or trademark of a domestic manufacturer, a law which commends itself as just and necessary to the protection of the manufacturing industries of this country, but which must rest for its constitutionality solely on the clause of the Constitution which gives to Congress the power to regulate commerce with foreign nations, and on such a construction of that clause as brings the regulation of trademarks a part of the general regulation of commerce. That this law is valid as being within the power of Congress under the Constitution is not doubted.

IMPORTANCE TO COMMERCE OF THE PROTECTION OF TRADEMARKS.[edit]

That the protection of trademarks used in commerce among the several States is necessary if honest competition is to be encouraged, and it can hardly be questioned that it is as important to the public, interest that honest}' in competition should be encouraged, a competition which stimulates effort and leads to excellence, as it is that contracts in restraint of trade should be prohibited, is not open to doubt. The only question necessary to be considered is by what authority they should be regulated and protected.

In the case of Addyston Pipe & Steel Co. v. U. S. (175 U. S., 211), decided by the Supreme Court at the October term, 1899, it was said, in the opinion of the court, delivered by Mr. Justice Peckham, in reference to private contracts which were intended to operate to prevent fair and open competition, that:

It is, indeed, urged that to include private contracts of this description within the grant of this power to Congress is to take from the States their own power over the subject, and to interfere with the liberty of the individual in a manner and to an extent never contemplated by the framers of the Constitution, and not fairly justified by any language used in that instrument. If Congress has not the power to legislate upon the subject of contracts of the kind mentioned, because the constitutional provision as to the liberty of the citizen limits to that extent its power to regulate interstate commerce, then it would seem to follow that the several States have that power, although such contracts relate to interstate commerce and more or less regulate it If neither Congress nor the State legislatures have such power, then we are brought to the somewhat extraordinary position that there is no authority, State or National, which can legislate upon the subject of or prohibit such contracts. This can not be the case.

If it should be held that Congress has no power and the State legislatures have full and complete authority to thus far regulate interstate commerce by means of their control over private contracts between individuals or corporations, then the legislation of the different States might and probably would differ in regard to the matter, according to what each State might regard as its own particular interest. One State might condemn all kinds of contracts of the class described while another might permit the making of all of them, while still another might permit some and prohibit others, and thus great confusion would ensue and it would be difficult in many cases to know just what law was applicable to any particular contract regarding and regulating interstate commerce. At the same time contracts might be made between individuals or corporations of such extent and magnitude as to seriously affect commerce among the States. These consequences would seemingly necessarily follow if it were decided that the State legislatures had control over the subject to the extent mentioned.

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Applying the language of the court in this decision to the question of the prevention of unfair competition in interstate commerce by providing for the protection of trademarks used in such commerce, may it not be said that —

If neither Congress nor the State legislatures have the power to protect such trademarks, then we are brought to the somewhat extraordinary position that there is no authority, State or National, which can legislate upon the subject of or protect such trademarks. This can not be the case.

DECISIONS OF UNITED STATES COURTS ON TRADEMARKS.[edit]

If it should be held that Congress has no power and the State legislatures have full and complete authority to regulate interstate commerce by determining the conditions under which trademarks used in such commerce are to be protected, then it must be said that the condition of affairs with respect to such trademarks, which in respect to certain contracts is pointed out in this decision of the Supreme Court as seriously objectionable, has already arisen. Nearly all of the several States have already, as has been above set forth, adopted laws providing for the registration and protection of trademarks. These laws are far from uniform, and if they are to be taken as applying to trademarks used in interstate and foreign commerce (for, as stated in the above decision of the Supreme Court, "when we speak of interstate we also include in our meaning foreign commerce"), a condition which is far from desirable is presented. The right to the ownership of a trademark, the question of what constitutes a trademark, and the other important questions on which the protection of trademarks depends would be, and to some extent are to-day, subject to inconsistent and contradictory decisions among the courts of the different States, and that, too, upon matters which pertain to the regulation of interstate commerce. Numerous cases involving trademarks between citizens of different States and even between subjects of foreign nations and citizens of the United States have been brought before State courts, and such courts have taken jurisdiction of and decided such cases. The plaintiff in the case of Amoskeag Mfg. Co. v. Spear (2 Sand., S. C., 599, Cox Am. Trade-mark Cases, 67), decided in 1849 in the superior court of the city of New York, which is recognized as a leading case on the subject of trademarks and has been repeatedly cited with approval by the Supreme Court, was a corporation engaged in the manufacture of cotton goods at Amoskeag Falls in the State of New Hampshire. The complainants in the case of Taylor v. Carpenter (11 Paige, 392, and 2 Sand., Ch. R., 603; Cox Am. trademark Cases, 45), decided in 1846 by the court for the correction of errors of New York, were British subjects of the borough of Leicester, England. In Coats v. Holbrook (2 Sand., Ch. R., 586, Cox Am. Trademark Cases, 20) decided in 1845 in the court of chancery of New York, the complainants were British subjects located at Paisley, Scotland. In Derringer v. Plate decided by the supreme court of California (29 Cal. , 292, Cox Am. Trademark Cases, 324) the plaintiff was a resident of Pennsylvania.

Cases in which the same conditions, as to residence of the parties, obtained have been decided by courts of the United States. Not a few of these cases have by appeal been brought before the Supreme Court. Nearly all of the later cases involving a controversy as to the right to a trademark between citizens of different States or between an alien

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and a citizen of the United States have been brought before United States courts under the provision of the Constitution which extends the judicial power of the United States courts to "controversies * * * between citizens of different States * * * and between a State, or the citizens thereof and foreign States, citizens or subjects." (Article HI, sec. 2.)

COMMON LAW OF THE UNITED STATES.[edit]

The United States courts in deciding the trademark cases brought before them have applied the principles of the so-called common law of trademarks. The right to entertain jurisdiction of such cases or to decide them in accordance with the so-called common law of trademarks was assumed in the first trademark case brought before a United States court, the case of Taylor v. Carpenter, before referred to,[54] decided in 1844 by Judge Story in the circuit court for the district of Massachusetts) 3 Story, 458. Cox Am. Trade-mark Cases, 14), and no question of the right of the United States courts to apply in such cases this common law of trademarks appears to have been raised in any of the numerous cases thereafter decided by such courts, notwithstanding that this common law of trademarks was not the common law as it was held to exist prior to the separation of this country from Great Britain, but was the law derived from decisions rendered in the courts of Great Britain long subsequent to such separation, and notwithstanding that in a case involving copyright, a subject in many respects analogous to that of trademarks, it had been distinctly held by the Supreme Court that:

It is clear there can be no common law of the United States. The Federal Government is composed of 24 sovereign and independent States, each of which may have its local usages, customs, and common law. There is no principle which pervades the Union and has the authority of law that is not embodied in the Constitution or laws of the Union. The common law could be made a part of our Federal system only by legislative adoption.
When, therefore, a common-law right is asserted, we must look to the State in which the controversy originated; and in the case under consideration, as the copyright was entered in the clerk's office of the district court of Pennsylvania, for the first volume of the book in controversy, and it was published in that State, we may inquire whether the common law as to copyrights, if any existed, was adopted in Pennsylvania.
It is insisted that our ancestors when they migrated to this country brought with them the English common law as a part of their heritage.
That this was the case to a limited extent is admitted. No one will contend that the common law as it existed in England has ever been in force in all its provisions in any State in this Union. It was adopted so far only as its principles were suited to the condition of the colonies, and from this circumstance we see what is common law in one State is not so considered in another. The judicial decisions, the usages, and customs of the respective States must determine how far the common law has been introduced and sanctioned in each. (Wheaton et al. v. Peters et al., 33 U. S.; 8 Peters, 791.)

Notwithstanding this decision the United States courts, as well as the State courts, clearly recognizing the necessity of some law under which the right of the owner of a trademark to an exclusive property in its use could be protected, have not hesitated to so far apply the so-called common law of trademarks that it seems to be to-day recognized by the Supreme Court as the law of the land. In the decision of the Supreme Court in the Trademark Cases (100 U. S., 82), before cited, it is said:

The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose, mark it is, to the exclusion of use by all other
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persons, has been long recognized by the common law and the chancery courts of England and of this country, and by the statutes of some of the States. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage.

These propositions are so well understood as to require neither the citation of authorities nor an elaborate argument to prove them.

So, too, in Manufacturing Co. v. Trainer (101 U. S., 51), the court says:

The general doctrine of the law as to trade-marks, the symbols or signs which may be used to designate products of a particular manufacture, and the protection which the courts will afford to those who originally appropriated them, are not controverted. Everyone is at liberty to affix to a product of his own manufacture any symbol or device, not previously appropriated, which will distinguish it from articles of the same general nature manufactured or sold by others, and thus secure to himself the benefits of increased sale by reason of any peculiar excellence he may have given it. The symbol or device thus becomes a sign to the public of the origin of the goods to which it is attached, and an assurance that they are the genuine article of the original producer. In this way it often proves to be of great value to the manufacturer in preventing the substitution and sale of an inferior and different article for his products. It becomes his trade-mark, and the courts will protect him in its exclusive use, either by the imposition of damages for its wrongful appropriation or by restraining them to account for profits made on a sale of goods marked with it.

See also Manhattan Co. v. Wood (108 U. S., 218), Menendez v. Holt (128 U. S., 514), and Richmond Nervine Co. v. Richmond (159 U. S., 293), in all of which the right of property in a trademark and the right of the owner of the mark to the protection of the courts is distinctly recognized.

The Supreme Court while intimating in the Trademark Cases (100 U. S., 82), above referred to, that "the property in trademarks and the right to their exclusive use rest on the laws of the States, and, like the great body of the rights of person and' of property, depend on them for security and protection," in its decisions in other trademark cases rendered both before and since the decision in the Trademark Cases have followed the circuit courts of the United States in looking not to the State in which the controversy arose to determine, from the judicial decisions, the usages and customs of that State, how far the common law had been there introduced and sanctioned, as was distinctly held should be done in Wheaton et al. v. Peters et al., above referred to, but to the decisions of the courts of Great Britain of recent date, and even decisions of the courts o f France, as well as decisions of the State courts of States other than that in which the controversy arose.

THE BASIS OF THE COMMON LAW OF TRADEMARKS.[edit]

In the first trademark case brought before a United States court, the case of Taylor v. Carpenter, above referred to[55] (suit in equity), decided in 1841 by Judge Story in the circuit court for the district of Massachusetts (3 Story, 458, Cox Am. Trademark Cases, 14), the court relied for its authorities, by referring to 2 Story Eq., sec. 951, on decisions of the English courts rendered in 1837 and 1838. In the second trademark case brought before a United States court, the case of Taylor v. Carpenter (suit at law), decided in 1846 by Judge

  • [Page 122]

Woodbury in the circuit court for the district of Massachusetts (2 Wood & M., 1, Cox Arn. Trademark Cases, 32), the court based its decision almost exclusively on decisions of the English courts, referring also to the statutes of the State of New York. In the case of Fowle v. Spear, decided in 1847 by Judge Kane in the circuit court for the eastern district of Pennsylvania (7 Penn. L. J., 176, Cox Am. Trademark Cases, 67), the court applied the principles of the English case of Pidding v. How, decided in 1837, this being the only authority cited. In other cases decided by the circuit courts of the United States, substantially the same condition is found, the decisions mainly relied on being the decisions of the English courts.

In the case of McLean v. Fleming, decided by the Supreme Court in 1877 (96 U. S., 245), the authorities on the question of trademarks were fully reviewed and the rules determined from them were applied to the case, the right of the complainant to protection for his trademark being affirmed. The authorities cited as determining the principles of the trademark law were for the most part decisions of the English courts, many of them of comparatively recent date, and decisions of the State courts of the State of New York, and of the State courts of Massachusetts, Pennsylvania, and Connecticut, and though the controversy appears to have arisen in the State of Missouri, no judicial decisions rendered in that State are cited.

In the case of Singer Mfg. Co. v. June Mfg. Co., decided by the Supreme Court in 1896 (163 U. S., 169), decisions of State courts of Massachusetts and New York, as well as decisions of the United States circuit courts rendered in several different circuits, are cited as determining the principles of the law applicable to the cases before the court, and in support of these principles P^nglish decisions are cited. The opinions of French writers and decisions of French courts are also cited, and it is stated, as having a distinct bearing on the question before the court, that the "French writers and courts recognize the doctrine to be substantially like that which is enforced in America and England."

NECESSITY FOR A GENERAL TRADEMARK LAW.[edit]

It would seem from these decisions that the United States courts recognizing the. necessity of a law for the protection of trademarks which should be uniform throughout the length and breadth of the land, finding no statute law on the subject and finding that the common law as determined by the judicial decisions, usages, and customs of Great Britain, and of certain of the States in which the common law has been accepted, commended itself as just and reasonable, have given to such law the force and effect of statute in all trademark cases brought before them without regard to the question of the judicial decisions, usages, and customs of the particular State in which the controversy arose. The attitude of the Supreme Court toward the question of the protection of trademarks as shown by their decisions, and this is true as well of the attitude of the circuit courts, seems to be indicated in the decision of that court in the case of the Addyston Pipe & Stool Co. v. U. S. , above referred to,[56] in which it is said:

But upon the matter of interstate and foreign commerce and the proper regulation thereof, the subject being not alone national, but international in its character, the great importance of having but one source for the law which regulates that commerce throughout the length and breadth of the land can not in our opinion be overestimated.
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That this view of the question is fully warranted and that a clear necessity exists for a uniform law for the protection of trademarks used in interstate and foreign commerce is apparent. Not only are the rights of owners of trademarks located in the United States to be considered, but also the rights of alien owners of trademarks, especially since the United States is bound under the conditions of the treaties above referred to, which have been entered into with foreign nations on this subject, to afford to such owners of trademarks as are subjects or citizens of such foreign countries protection for their trademarks. To compel such alien owners of trademarks to go into the State courts and to comph^ with the conditions of State laws with respect to registration is manifestly unreasonable. Yet this is practically required under present conditions. The State laws, as has been above stated, very generally protect trademarks registered in accordance with their provisions, by providing that willful infringers of trademarks so registered may be punished by fine and imprisonment, thus giving a protection far more adequate than that given by the so-called common law of trademarks which is applied by the United States courts. In order to secure this additional protection, the foreign owner of a trademark must not only comply with the requirements of the treaty which requires him to deposit his mark at the Patent Office in Washington, paying the fee and complying with the requirements of the act of 1881, but must also pay the fees required for registration in the several States and comply with the various requirements of the several laws. Unless he does so, he is not to-day given the protection for his trademark which is given to citizens of the United States.

That this is a serious difficulty and one which has resulted in material embarrassment to foreign owners of trademarks, and has given rise to an impression among them that the United States is not disposed to carry out its treaty obligations in good faith, since they are unable to believe that it is powerless under the constitutional limitations to do so, is well known. At the several conferences held under the International Convention since the adhesion of the United States thereto, this matter has been brought up by the delegates from foreign nations. At the recent conference at Brussels in 1897, the French delegates presented the following resolution:

That the Government of the United States of America attempt in every way to provide as soon as possible Federal legislation which will replace local legislation in reference to trademarks, and will insure an easier and more efficient suppression of trademark infringements.

While it may be that this difficulty can not be wholly overcome, since the laws adopted by State legislatures on the subject may not and undoubtedly will not be uniform in all respects with the laws which may be adopted by Congress as regards the protection of trademarks and the remedies against infringers, and local — that is, State — legislation on the subject of trademarks in so far as regards the commerce which may be regulated by the States can not, under the Constitution, be replaced by legislation by Congress, there is no question that this difficulty would be largely done away with by the adoption by Congress of a law which should adequately provide for the registration and protection of trademarks used in commerce among the several States, as well as commerce with foreign nations and the Indian tribes.

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POWER OF CONGRESS TO REGULATE TRADEMARKS.[edit]

That Congress may enact into law the so-called common law of trademarks, which i.s now given the force and effect of statutory law by the United States courts making that law applicable to controversies respecting trademarks, of which the United States courts have jurisdiction under the provisions of the Constitution — that is, controversies arising between citizens of different States and between citizens of the United States and citizens or subjects of foreign States — seems clear. That the United States courts have no jurisdiction over controversies with respect to trademarks arising between citizens of the same State, except as jurisdiction as to such cases has been or may be given by act of Congress, is also clear. (See Ryder?'. Holt, 128 U. S., 525, and Trade-mark Cases, 100 U. S., 82, before referred to.[57])

That manufactures made and consumed within a State are subject to State legislation and are not subject to regulation by Congress is clear from the opinion of Jefferson above referred to, and from numerous decisions of the courts. There is, however, a clear distinction between manufacture and commerce, as was pointed out in the decision of the Supreme Court in the case of the United States v. E. C. Knight Co. (156 U. S., 1.) The holding in this case is thus stated in the decision of the Supreme Court in the case, of Addyston Pipe & Steel Co. r. U. S., before referred to:[58]

* * * The case was decided upon the principle that a combination simply to control manufacture was not a violation of the act of Congress, because such a contract or combination did not directly control or affect interstate commerce, but that contracts for the sale and transportation to other States of specific articles were proper subjects for regulation, because they did form part of such commerce.

the court thus clearly indicating that Congress has the power under the Constitution to regulate contracts for the sale and transportation to other States of specific articles.

In the decision in Addyston Pipe & Steel Co. v. U. S. the court further holds:

Where the contract is for the sale of the article and for its delivery in another State, the transaction is one of interstate commerce, although the vendor may have also agreed to manufacture it in order to fulfill his contract of sale. In such a case a combination would be properly called a combination in restraint of interstate commerce, and not one relating only to manufacture.

If trademarks related solely to manufactures, under these decisions they would not be subject to regulations by Congress. But, as ha.s been above pointed out, while trademarks may be the property of manufacturers, the right to their exclusive use can be acquired only through the sale of the manufactured articles, either directly to consumers or to others through whom they are sold to the consumers. Trademarks pertain distinctively to the sale of articles, their sole purpose and function being to enable the buyer to distinguish the goods of one manufacturer from goods of the same kind made by another.

REGULATION OF INTERSTATE TRADEMARKS WITHIN CONGRESSIONAL CONTROL.[edit]

If, as held by the Supreme Court in the above case, contracts for the sale of an article and for its delivery in another State are so far within the constitutional power of Congress to regulate that it may enact legislation to prohibit and punish combinations affecting them as

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being in restraint of interstate commerce, it seems clear that contracts "for the sale of an article and its delivery in another State, although the vendor may have also agreed to manufacture it in order to fulfill his contract of sale," are within the power of Congress to regulate in so far as may be necessary to prevent the carrying out of any such contracts which involve unfair competition with others engaged in interstate commerce. In other words, if Congress has power to prevent combinations in restraint of competition in the sale and exchange of commodities among the several States, it seems clear that it has also the power to prevent unfairness in competition in such sale and exchange by providing for the protection of trademarks used in commerce among the several States. The direct tendency of the protection of trademarks is, as stated by Judge Duer in the well-known case of Amoskeag Mfg. Co. r. Spear, before referred to:[59]

* * * To produce and encourage a competition by which the interests of the public are sure to be promoted; a competition that stimulates effort and leads to excellence, from the certainty of an adequate reward.

In the same decision it is clearly pointed out that the imitator of a trademark by which the goods of another are distinguished and known —

* * * Commits a fraud upon the public, and upon the true owner of the trademarks. The purchaser has imposed upon him an article he never meant to buy, and the owner is robbed of the fruits of the reputation that he has successfully labored to earn.

That the use of a trademark by others than its rightful owner may injuriously affect the commerce in which it is used, even to the extent of practically destroying the trade in the article on which it is used by destroying the confidence of the public in the article bearing the trademark, is obvious and has, without doubt, repeatedly happened. It thus directly obstructs and thus regulates the commerce in which it is used, whether this be commerce within a State or commerce with foreign nations or Indian tribes or commerce among the several States. Looked at from this standpoint, the use of a trademark in interstate commerce by others than its rightful owner is within the power of Congress to regulate under the decision of the Supreme Court in Addyson Pipe & Steel Co. v. U. S., above referred to,[60] in which it is held that —

Anything which directly obstructs, and thus regulates, that commerce which is carried oil among the States, whether it is State legislation or private contracts between individuals or corporations, should be subject to the power of Congress in the regulation of that commerce.

The regulation of trademarks used in interstate commerce, as well as foreign commerce, being, as has been pointed out, within the constitutional authority of Congress, it is important to the commercial interests that this authority be exercised to the extent of providing in the interest of the public that all persons engaged in interstate or foreign commerce shall be permitted to give notice, by registration, of their claim of right to the marks used by them in such commerce and by affording to registrants a measure of protection greater than that afforded by the common law without the necessity for registration, in order to induce general registration of marks used in commerce within Congressional control. As to the extent of the additional protection which should be afforded by statute there is serious question. There is no doubt that to provide a criminal remedy against deliberate and willful infringement is logical and in many respects desirable, yet the

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expediency of such a provision is open to serious doubt. In view of this doubt, and in view of the further fact that the question of such a remedy is a question of criminal law rather than trademark law, I am of opinion that it should be left to the consideration of the commission intrusted with the revision of the criminal laws of the United States.

The proposed bill which follows gives to registrants advantages over those given by the common law in respect to the extent of damages (sees. 19 and 21); in respect to the delivery up for destruction of copies of infringing marks, etc. (sec. 22) ; in respect to the enforcement of an injunction granted in one of the circuit courts (sec. 22); in respect to the jurisdiction of the United States courts in controversies arising between citizens of the same State (sec. 20), and in respect to the exclusion from entry at custom-houses of merchandise falsely bearing a registered trademark (sec. 26).

The proposed bill in its general plan conforms in many respects to the trademark law of France,[61] in that it provides for registration of practically all marks, whatever their character, in use in commerce within Congressional control, provided they have not been already appropriated by another, and provides for giving to registrants advantages as regards remedies against infringers not enjoyed by nonregistrants, without at the same time making registration the basis of ownership in the mark. The common-law rights of owners of marks are by the express terms of the bill in no respect abrogated or lessened. (Sec. 24.)

The proposed bill is intended rather to remedy existing defects in the present trademark law than to introduce into the law the principle of attributive trademark laws, such as the trademark laws of Germany,[62] under which ownership is determined by priority in applying for registration, instead of by priority of use.

In respect to the provisions for carrying into effect treaty obligations, the bill which I propose is substantially the same as the bill proposed by the majority of this commission, as will appear from a comparison of sections 1, 6, and 26 of the bill proposed by me with sections 5, 8, and 33 of the majority bill. So, too, as regards the question of what marks should be registered, the term of registration, fees, appointment of representatives by nonresident registrants, appeals, and transfer of registered marks, the two proposed bills are in substantial agreement. (Compare sections 5, 15, 16, 4, 11, 12, and 24 of the bill proposed by me with sections 6, 9, 34, 7, 14, 15, and 25 of the majority bill.)

The bill proposed, by me follows.

Respectfully submitted.

ARTHUR P. GREELEY.
  1. 1 Art. I, sec. 8, eighth clause.
  2. Science of Mechanics, Allen, 1829.
  3. Appendix, Chap. XXV, p. 380.
  4. Appendix, Chap. XXV, p. 382.
  5. Appendix, Chap. XVIII, sec. 11, p. 335.
  6. Appendix, Chap. XVIII, sec. 2, p. 326.
  7. Appendix, Chap. XXV, p. 382.
  8. Appendix, Chap. XXV, p. 382.
  9. Appendix, Chap. XXV, p. 383.
  10. Appendix, Chap. XXV, p. 386.
  11. Appendix, Chap. XXV, p. 386.
  12. Appendix, Chap. XXV, p. 386.
  13. Appendix, Chap. XXV, p. 398.
  14. Appendix, Chap. XXV, p. 398.
  15. Appendix, Chap. XVIII, sec. 5, p. 330.
  16. Appendix, Chap. XVIII, sec. 1, p. 325.
  17. Appendix, Chap. XVIII, sec. 11, p. 335.
  18. Appendix, Chap. XVIII, sec. 2, p. 326.
  19. Appendix, Chap. XXV, p. 404.
  20. Appendix, Chap. XXV, p. 412.
  21. Appendix, Chap. XVIII, sec. 7, p. 331.
  22. Appendix, Chap. XVIII, sec. 8, p. 332.
  23. Appendix, Chap. XXV, p. 413.
  24. Appendix, Chap. XXV, p. 417.
  25. Appendix, Chap. XXV, p. 426.
  26. Appendix, Chap. XXV, pp. 432, 491.
  27. Appendix, Chap. XXV, p. 428.
  28. Appendix, Chap. XXV, p. 491.
  29. Appendix, Chap. XXV, p. 499.
  30. Appendix, Chap. XVIII, sec. 12, p. 336.
  31. Appendix, Chap. XVIII, sec. 8, p. 332.
  32. Appendix, Chap. XVIII, sec. 13, p. 337.
  33. Appendix, Chap. XVIII, sec. 2, p. 326.
  34. Appendix, Chap. XVIII, sec. 4, p. 329.
  35. Appendix, Chap. XVIII, sec. 9, p. 332.
  36. Appendix, Chap. XVIII, sec. 9, p. 332.
  37. Appendix, Chap. XVIII, sec. 10, p. 334.
  38. Appendix, Chap. XVIII, sec. 14, p. 337.
  39. Appendix, Chap. II, sec. 1, p. 146.
  40. Appendix, Chap. XIX, p. 340.
  41. Appendix, Chap. XXV, p. 491.
  42. Page 91.
  43. Page 91.
  44. Appendix, Chap. XXII, p. 352.
  45. Appendix, Chap. XXIII, p. 363.
  46. Page 112.
  47. Appendix, Chap. XXV, p. 413.
  48. Page lt 3.
  49. Appendix, Chap. XVIII, sec. 11, p. 335.
  50. Appendix, Chap. XVIII, sec. 2, p. 326.
  51. Appendix, Chap. XVIII, sec. 6, p. 331.
  52. Appendix, Chap. X VIII, sec. 12, p. 336.
  53. Appendix, Chap. XVHI, sec. 9, p. 332.
  54. Page 93.
  55. Page 93.
  56. Page 118.
  57. Page 103.
  58. Page 118.
  59. Page 113.
  60. Page 118.
  61. Appendix, Chap. XXIII, p. 363.
  62. Appendix, Chap. XXII, p. 352.
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