SECTION A. ACT OF CONGRESS OF JULY 8, 1870.1 SECTION 77.2 And be it further enacted, that any person or firm domiciled in the United States, and any corporation creat 1-Although this act is no longer in force, having been held unconstitutional, and the Acts of 1881 and 1905 having been since enacted, it is thought advisable to set forth the earlier act, in order that the decisions under it may be understood. In Leidersdorf v. Flint (1), 8 Biss, 327, the validity of the Act of 1870 was questioned by the United States Circuit Court, on the ground that the constitution of the United States did not authorize legislation by congress on the subject of trademarks, except such as had been actually used in commerce with foreign nations and among the several states, or with the Indian tribes; and in Trademark Cases, 100 U. S. 82, the act was formally declared by the supreme court to be on this ground unconstitutional and invalid. But this does not entitle persons havIng marks registered under the invalid act to recover back the fees paid by them (Woodman v. United States, 15 Ct. of Cl. 541), though they will be credited with such fees when applying for registration under the new act. Sec Act of 1881, § 6, infra. Nor does the invalidity of the act justify the disregard of injunctions grant ed under the general jurisdiction of the court. United States V. Roche, 1 McCrary, 385. And it has been held that registration of a mark under the invalid act, even without re-registration under the Act of 1881, is sufficient to prevent registration of a similar mark under the new Act of 1881. Ex parte Lyon, Dupny & Co., 28 Off. Gaz. 191. Since the passing of the Act of 1870, it has been considered in the Patent Office that while, on the one hand, the benefits of registration as trademarks were to be reserved for trademarks, and for trademarks only (e. g., In re Parker, 13 Off. Caz. 323, registration as a trademark was refused to that which could at most amount to a design), so, on the other hand, it was only by registering them as trademarks, and not by patenting them as designs (Ex parte King, Comm. Decis. 1870, p. 109; In re Whyte, Id. 1871, p. 304), or registering them as labels (In re Godillot, 6 Off. Gaz. 641; In re Simpson & Sons, 10 Id. 333; Ex parte Davids & Co., 16 Id. 94; Ex parte Schumacher & Ettlinger (1), 19 Id. 791), that the benefits of 2-See Act of 1881, secs. 1, 2. ed by the authority of the United States, or of any state or territory thereof, and any person, firm or corporation resident of or located in any foreign country which by treaty or convention affords similar privileges to the citizens of the United States, and who are entitled to the exclusive use3 of any lawful trademark, or who intend to adopt and use any trademark, for exclusive use within the United States, may obtain protection for such lawful the statute could be obtained for trademarks. Descriptive words not registerable as trademarks were properly allowed to be registered as labels. Ex parte Waeferling, 16 Id. 746; Ex parte Brigham, 20 Id. 891; Ex parte Lutz, 33 Id. 1389; and see In re Park, 12 Id. 2, in which it was sought to register as part of a label a device for which the applicant had previously sought registration as a trademark. In United States v. Marble, 22 Id. 1366, however, the Supreme Court of the District of Columbia held that the Commissioner of Patents had no authority to refuse registration to a label merely on the ground that it might have been registered as a trademark; but in the later case of Ex parte Schumacher & Ettlinger (2), 22 Id. 1291, the commissioner again refused registration as labels to what he considered to be trademarks; and in Ex parte Moodie, 28 Id. 1271, and Ex parte Wiesel, 36 Id. 689, the commissioner repeated this decision, and his course was in the former case upheld on appeal by the Supreme Court of the District of Columbia in Ex parte Moodie, 28 Id. 1271. The federal courts have also held that a trademark must be registered as such, and not copyrighted as a label. Schumacher & Ett linger v. Wogram, 35 Fed. Rep. 210. It is for the commissioner to decide whether what is presented to him is a trademark or label. Ex parte Moodie, 28 Off. Cas. 1271. 3-In McElwee v. Blackwell, 15 Off. Gaz. 658, it was held that although where registration had been wrongfully granted to one, it might subsequently be properly granted to another who was really entitled to the exclusive use, yet it would not be granted to another who was not entitled to the exclusive use, even though he might be entitled to use the mark to some extent. And see Wright v. Simpson, 15 Id. 968; also Sorg v. Welsh, 16 Id. 910, as to admissions of right in another; and Yale Cigar Manufacturing Co. v. Yale, 30 Id. 1183. Under the Act of 1881 registration will be refused where it appears that the applicant is only one of several who have a right to use the mark. Ex parte Langdon, 61 Off. Gaz. 286. 4-Under these words a new trademark might be registered prior to any actual use. In re Rothschild, 7 Off. Gaz. 220; and see Hoosier Drill Co. v. Ingels, 14 Id. 785. This is not the case under the Act of 1881. See secs. 1 and 2, notes, and Ex parte Strasburger & Co., 20 O. Gaz. 155. 5 trademark by complying with the following requirements, towit: First. By causing to be recorded in the Patent Office, the names of the parties and their residence and place of business,8 who desire the protection of the trademark. Second. The class of merchandise and the particular description of goods10 comprised in such class, by which the trademark has been or is intended to be appropriated. 5-As to what is a lawful trademark, see infra, § 79. Registration can not make lawful trademark out of that which does not contain the necessary elements (Moorman v. Hoge, 2 Sawy. 78; Schumacher & Ettlinger V. Schwenke (2), 36 Off. Gaz. 457); but by sec. 7 of the Act of 1881 registration is prima facie evidence of ownership. It has been doubted whether the use of a registered trademark can be restrained (Decker v. Decker, 52 How. Pr. 218); but in Glen Cove Manufacturing Co. v. Ludeman, 23 Blatchf. 46, an injunction was granted in such a case. See also Schumacher & Ettlinger v. Schwenke (2), 36 Off. Gaz. 457. Separate registra tion must be obtained for each mark which differs from another by the addition of a symbol: e. g., "X," "XX," "XXX," were held to require separate registration. In re English, Comm. Decis. 1870, 142; and see In re Eagle Pencil Co., 10 Off. Gaz. 981. 6-Absolute compliance with these requirements is necessary on the part of applicants. In re Hankinson, 8 Off. Gaz. 89. But it is not necessary that the very words of the act should be cited, so long as the spirit of it is satisfied. Vidvard & Sheehan, 8 Id. 143. 7-In Lacroix v. Escobal, 37 La. In re Ann. 533, it was held that a French citizen, who had not deposited his mark in the United States patent office, as required by the Convention of 1869 between the United States and France, was not entitled to maintain an action for infringement. But see Société, etc. de la Benedictine v. Micalovitch, 36 Alb. L. J. 364. 8-The registration of the name of a firm has been held to be sufficient, without giving the particulars as to each of the partners. Smith v. Reynolds (2), 3 Off. Gaz. 213; 10 Blatchf. 100. 9-This requirement has been interpreted to exclude from registration the marks of persons other than manufacturers or merchants: e. g., a carpet cleaner. In re Hankinson, 8 Off. Gaz. 89. 10-It has been held that a description of the class and goods as "paints" is sufficient (Smith v. Reynolds (2), 10 Blatchf. 100), and so with "alcoholic spirits" (In re Boehm & Co., 8 Off. Gaz. 319); but that "fancy goods" is insufficient, as being too general a term. In re Lisner, 13 Id. 455. Different persons may register the same trademark for different descriptions of goods even in the same class. Sorg v. Welsh, 16 Id. 910. In Smith v. Reynolds (2), 10 Blatchf. 100, and s. c. (3), 3 Id. 213, it was held that a firm which Third. A description of the trademark itself 11 with fac-similes thereof 12 and the mode in which it has been or is intended to be applied and used. 13 Fourth. The length of time, if any, during which the trademark has been used.14 Fifth. The payment of a fee of twenty-five dollars, in the same manner and for the same purpose as the fee required for patents 15 Sixth. The compliance with such regulations as may be prescribed by the Commissioner of Patents. 16 14-See Ex parte Consolidated Fruit Jar Co., 16 Off. Gaz. 679. Seventh. The filing of a declaration,17 under the oath of the person or of some member of the firm or officer of the corporation, to the effect that the party claiming protection for the trademark has the right to the use of the same, and that no other person, firm or corporation has the right to such use, either in the identical form, or having such near resemblance thereto as might be calcuhad registered a trademark for "paints" was not entitled to restrain the use of the mark on white lead by another firm which had used the mark on that variety of paint before the plaintiffs had used or registered their mark; and in the former case it was held that the registration being bad as to white lead was bad in toto, though but for that it might have been good. 11-The trademark must be sufficiently described for it to be possible to clearly distinguish between the essential and non-essential elements. In re Volta Belt Co., 8 Off. Gaz. 144. 12-The fac-simile limits the verbal description of the mark. Duke v. Green, 16 Off. Gaz. 1094. 13-The previous user of the applicants or their derivative title must be stated. Ex parte Consolidated Fruit Jar Co., 16 Off. Gaz. 679. Only one example of the mode of use will be admitted. In re Kimball, 11 Id. 1109. And see Smith v. Reynolds (2), 10 Blatchf. 100. 15-A fee paid can only be recovered when it was paid by actual mistake: e. g., a payment in excess, or one not required by law When, therefore, an application has failed because the proposed mark was not registrable, the fee paid can not be recovered, although a renewed application for the registration of an essentially different mark has proved successful. In re Block & Co., 14 Off. Gaz. 235. See note 1, p. 501, supra, as to crediting fees paid under this invalid act. 16-See § 81, infra, and note thereto. 17-As to the necessity for the filing of this declaration, and for the production of sufficient evidence of it, on a trial for infringement, see Smith v. Reynolds (1), 10 Blatchf. 85, where an injunction was refused on the ground of the deficiency of such evidence. lated to deceive, 18 and that the description and fac-similes presented for record are true copies of the trademark sought to be protected. SECTION 78.19 And be it further enacted, that such trademark shall remain in force for thirty years from the date of such registration, except in cases where such trademark is claimed for and applied to articles not manufactured in this country, and in which it receives protection under the laws of any foreign country for a shorter period, in which case it shall cease to have any force in this country by virtue of this act, at the same time that it becomes of no effect elsewhere, and during the period that it remains in force it shall entitle the person, firm, or corporation registering the same to the exclusive use thereof so far as regards the description of goods to which it is appropriated in the statement filed under oath as aforesaid, and no other person shall lawfully use the same trademark, or substantially the same, or so nearly resembling it as to be calculated to deceive, upon substantially the same description of goods. 20 Provided that six months prior to the expiration of the said term of thirty years, application may be made for a renewal of such registration, under regulations to be prescribed by the Commissioner of Patents, and the fee for such renewal shall be the same as for the original registration, certificate of such renewal shall be issued in the same manner as for the original registration, and such trademark shall remain in force for further term of thirty years; and provided further, that nothing in this section shall be construed by any court as abridging or in any manner affecting unfavorably the claim of any person, firm, corporation, or company to any trademark after the expiration of the term for which such trademark was registered. |