And that is the reason we have gotten together and prepared this little bill. I think copies of the convention have been distributed. If you will kindly refer to article 1 of the convention, on page 5

Senator JONES. Has this bill been considered at all by the Department of State?

Mr. CARTER. Yes. A representative of the Department of State sat in at the hearings on this bill.

Senator JONES. And they are satisfied that it carries out the convention?

Mr. CARTER. They have filed no objections to it. I may say that the bill was prepared by a committee consisting of a representative of the Department of State and Mr. Whitehead and, sometimes, Mr. Newton, the Commissioner of Patents; Dr. McGuire, representing the United States section of the International Commission; I represented the Department of Commerce. We consulted several prominent trade-mark attorneys at various phases. So that the bill as finally presented to you represents the unanimous agreement of that committee.

Senator JONES. It seems to me that those who have given it special consideration should really be those who framed the treaty, so as to see that it carries out the treaty; and that is really the purpose of it. Mr. CARTER. I may say that the draft of this treaty was prepared by Mr. Moore at that time Commissioner of Patents, now deceasedand while the convention as finally enacted is not an exact copy of his draft, it was based largely upon his draft, modified to meet the views of those present.

Senator NELSON. You referred there to an article of the treaty. What article was that?

Mr. CARTER. Article 1 of the treaty provides that the signatory nations will enter into a convention.

Article 2. under that, provides that "any mark duly registered in one of the signatory States shall be considered as registered also in the other States of the union, without prejudice to the rights of third persons and to the provisions of the laws of each State governing the same."

We interpreted the phrase at the end reading "without prejudice to the provisions of the laws of each State governing the same" as giving us a right to examine these marks to see whether they conflicted with marks upon our register or with any other provisions of our law. In other words, we did not think that these marks coming from South America should be given registration privileges in this country regardless of their form or whether they conflicted with other marks, when our own citizens have not that privilege.

Senator JONES. And that is the construction given to that language by the State Department?

Mr. CARTER. I think that it is the basis of construction of treaties that the foreigner shall never be given greater rights than the native. Senator LENROOT. May I ask you in that connection what interpretation you give to the word “registered" in this article-the same interpretation that is given to it in our own trade-mark law?

Mr. CARTER. The interpretation would depend upon the State in which registered; for instance, a mark registered in Argentina has certain defects.

Senator LENROOT. I am speaking of the United States.

Mr. CARTER. In this country it would simply be a mark registered in accordance with our law.

Senator LENROOT. If" registered" means the same in both our own law and in this convention, so far as the United States is concerned, under this article if a registration is made in the Argentine Republic, does not this article absolutely determine that it has the same effect in the United States as if actually registered here, without any action by the commission?

Mr. CARTER. No; because of this clause "without prejudice to the rights of third persons and to the provisions of the laws of each State governing the same "; in other words, it is registered, but without prejudice to our law on the subject. Our law on the subject requires that before a mark is registered it must be examined to see if it conflicts with other marks. So that because of that little provision we have the right to determine first whether that mark conflicts with any marks already on our register.

Senator LENROOT. That is the construction you give it?

Mr. CARTER. I will tell you one reason why I would give it that construction. The first reason, we would be giving greater rights to foreigners than to our own citizens; the second reason is that this treaty is modeled and is admitted in public print to be modeled upon the treaty signed at Madrid in 1891 and modified later at Brussels and at Washington in 1911, which provides for the international registration of marks in a bureau at Berne, Switzerland; and it was admitted that this treaty was modeled after that and tried to follow out that treaty because it had worked so successfully. That treaty has been interpreted to mean that where a Patent Office examines marks to determine whether they are interpreted, under this treaty they would have the right to examine marks registered in the international bureau for the same purpose, and the operation of the Berne bureau is exactly that way, that if the mark is registered by an Austrian, say, and then registered at Berne, Portugal, for instance, has a right to examine that mark to see whether it conflicts with any marks on her register before granting it recognition. If it does not conflict, they grant recognition; if it does conflict, they refuse to grant recognition to it, and the mark is not protected in that particular country.

Senator LENROOT. I would have thought it very clear from this language that the interpretation of this would have been that that was designed merely to give to registration in a given State the same effect that is given-and no greater effect than is given-to it by the laws of that State with reference to its own registration.

Mr. CARTER. You see, the difficulty there would be that an Argentine could get registration in his patent office of a lot of trade-marks that could not be registered in our Patent Office, and could then come up here and, by virtue of this convention, get protection of those trade-marks or have them considered as registered.

Senator LENROOT. I appreciate that. It would only be considered registered if such a trade-mark should be registered in this country? Mr. CARTER. That is exactly the interpretation we give it. Senator LENROOT. But I am sure from that interpretation that you interpret it as the right of the Commissioner of Patents to pass, for instance, upon priority and things of that kind.

Mr. CARTER. No; not exactly on priority; but if it is already registered in this country, he, as an American citizen, could not register it here. Therefore he, as an Argentine citizen, should not be allowed to register it here and have the benefits of registration.

Senator LENROOT. You may be right, although I very much doubt whether a court would give that construction.

Mr. WHITEHEAD. Let me call your attention to section 8 of article 12, halfway down page 10, where it is interpreted what the duties of these bureaus are.

The CHAIRMAN (reading):

To investigate cases where trade-marks, designs, and industrial models have failed to obtain the recognition of registration provided for by this convention on the part of the authorities of any one of the States forming the union, and to communicate the facts and reasons to the government of the country of origin and to interested parties.

Mr. WHITEHEAD. That seems to contemplate that in order to get the benefits in any country it shall be communicated back to the international bureau and then back to its own country. This is what the first paragraph of this proposed bill gives the Patent Office authority to do.

The CHAIRMAN. This convention at Buenos Aires of August 20, 1910, was not signed by the Argentine.

Mr. CARTER. They have signed it, but have not ratified it. But the situation we have described in Argentina is a situation existing also in Paraguay, Chile, and others, and since Argentina is the larger country, we usually speak of it. You see, any other interpretation of that convention would be wholly repugnant to our trade-mark law and the rights of our citizens, and, therefore, since our own representative drafted this convention, we must assume that he did not want it to be repugnant or did not intend it to be, drafted it accordingly, and that that provision "without prejudice to the provisions of the laws" was designed to give us that right of examination.

Senator JONES. What is the necessity of this first section of this bill? This treaty is a part of the law of the land?

Mr. CARTER. Yes.

Senator JONES. And it provides what the rights shall be under these provisions, and we can not change it by this statute, unless we want to abrogate the treaty.

Mr. CARTER. You are not changing it. What you are doing is enacting procedure to carry out the provision of a convention which is not itself self-operative.

Senator JONES. The first section of this bill says, "Any trade-mark duly registered in any international bureau of office created or recognized by virtue of a treaty or convention duly ratified by the Government of the United States of America, by and with the advice and consent of the Senate thereof, and proclaimed by the President to be in full force and effect shall be considered as a trade-mark for which application for registration under this act has been properly filed and shall be acted upon by the Patent Office accordingly." This article 2 provides that same thing: "Any mark duly registered in one of the signatory States shall be considered as registered also in the other States of the Union, without prejudice to the rights of third persons and to the provisions of the laws of each State governing the same.' Why do we not reenact that in the statute?

Senator LENROOT. This construction that he puts upon it is that it is not complete in itself, but it does require further action upon the part of the authorities of each State.

Senator JONES. If it does require further action, we have no legislation by which that action can be taken.

Mr. ČARTER. The Commissioner of Patents has no power under this convention to take any action whatsoever. The convention makes the agreement, but the commissioner can not act until you give him power to act. I referred this matter of the necessity for legislation to the solicitor of my department, who advised me accordingly.

Senator JONES. It seems to me that just emphasizes our contention that this ought to go to the Patent Committee.

Senator LENROOT. This whole procedure relates to the power of the Patent Office.

Mr. CARTER. In connection with trade-marks.

Senator LENROOT. I want to ask you this question: There is nothing in the treaty, as I take it, with reference to the duty of this bureau; at least, I have not seen anything to make reports to the various States of trade-marks registered?

Mr. CARTER. Yes.

Senator LENROOT. Please call my attention to that section.

Mr. CARTER. In article 12, section 6, on page 10, you will find one of the duties of the bureau is:

To present to the Government of Cuba and of the United States of Brazil, respectively, yearly reports of their labors which shall be communicated at the same time to all the governments of the other States of the Union.

Senator LENROOT. That does not cover what I had in mind. Here now is a trade-mark registered with this international bureau. Under this bill it is made the duty of the Commissioner of Patents to act upon that application or that registration. How does the Commissioner of Patents have any knowledge of what registrations have been made by this bureau?

Mr. WHITEHEAD. Sections 1 and 2 of that same article 12 cover that.

Senator LENROOT. I do not think that makes it the duty of this body-which it should be if your interpretation is correct, to forward to the States that are parties, immediately upon registration, the registration. On the other theory there would be no occasion for forwarding, if the registration was complete in itself. But if there is a further action required, as his interpretation now gives it, there is nothing in this treaty by which a registration in the international bureau comes before the various States for action.

Senator JONES. It seems each State must report to this international bureau, but it does not have to report to any of the States. Senator LENROOT. No; and thus upon the other construction it would not be necessary, if the registration was complete for all States, and then simply the efficacious effect of that registration depended upon the laws of the various States.

Mr. CARTER. You have no laws covering the course and effect of such registration, and what effect could you give it?

Senator LENROOT. Yes; we have. I would have given this construction that if a trade-mark is registered with this international

bureau under this treaty it would have exactly the same effect as if that was registered in the Patent Office, relating to the specific case but within the general power of registration.

Senator NELSON. That can not be so, Senator Lenroot, for the reason that you could register any trade-mark in our Patent Office here, and it could not have any effect upon the right in foreign countries, in the absence of treaty provision.

Senator LENROOT. I did not mean that; I meant with reference to our own country.

Mr. CARTER. A man can register practically any kind of a mark in the Argentine, and also, by virtue of his registration, give the same effect

The registration with interpretation of the without any further

Senator LENROOT (interposing). Not at all. this international bureau, under the other treaty, would be valid in the United States action if it were such a registration that the Commissioner of Patents were entitled to register.

Mr. CARTER. How is that to be determined?

Senator LENROOT. By the fact, for instance, that you might attempt to make a registration; that does not come within the powers of the commissioner at all to entertain, but as to whether a particular one was prior, whether there was a prior registration, would not be affected in the slightest degree.

Mr. CARTER. That brings out exactly the point I was trying to make. A man could register a trade-mark in the Argentine that was already registered here. You say you would give him the same effect as if that were registered?

Senator LENROOT. No. When he comes to seeking protection in the United States, the man who had the registration here would have the prior right.

Mr. CARTER. How would that be determined?

Senator LENROOT. It would be determined by the courts and would not require any action by the Patent Office.

Mr. CARTER. But the trouble is that the effect of both of those registrations would give them prima facie right in the courts, and the burden of proof would be upon each as against the other.

Senator LENROOT. I appreciated that. But that is a status you have in your treaty.

Mr. CARTER. What do you mean by that phrase, "without prejudice to the rights of third persons and to the provisions of the laws of each State governing the same"?

Senator LENROOT. To be frank with you, I think that means that if one State gives a certain protection to a registered trade-mark, that that registration will have that same protection in that country; but if that registration gives a less degree of protection in another State, that registration will only have the same degree of registration in that other State that the State gives in its own law; that seems to be very clear as to the purpose of that provision. In other words, that his registration in the international bureau does not give equal protection in all the States; the degree of protection that it has depends upon the laws of the various States.

Senator JONES. Let me ask you about this first section. It does not seem to me that it conforms to the treaty. Article 2 says: "Any mark duly registered in one of the signatory States shall be consid