mark," thus avoiding the confusion incident always to numerous restatements of the same propositions.

"A trade-mark is an arbitrary, distinctive name, symbol, or device, to indicate or authenticate the origin of the product to which it is attached." 3

"The purpose of the trade-mark is to get before the public, in a unique and impressive manner, the goods on which the mark is used, and to distinguish such goods from all other goods on the market of the same class or description. It serves a two-fold purpose, to protect the owner from unfair competition, and the public from being deceived." 4

The Supreme Court of the United States thus speaks of the trade-marks as they are known to our law: "The right to adopt and use a symbol or a 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 persons, has been long recognized by the common law and the chancery courts of England and of this country.

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 (viz., Act of July 8, 1870), and have remained in full force since its passage." 5

The term "technical trade-mark" defines a common-law trademark. It does not mean a mark that has been registered, as distinguished from one not registered.

§ 187. Functions of a Trade-Mark.-A trade-mark is essentially a stamp of authenticity of merchandise, or, as it has been called, the "commercial signature" of the trader. "The trade-mark brands the goods as genuine, just as the signature to a letter stamps it as authentic." Its primary purpose is to distinguish, to set apart, one man's merchandise from that of another. It is a

SG. W. Cole Co. v. American Cement Co., 130 Fed. 703-1904, at p. 705 (C. C. A. 7th Cir.); Sartor v. Schaden, 125 Iowa, 696–700-1904, 101 N. W. 511513.

4

Peter Schoenhofen Brewing Co. v.

Maltine Co., 30 App. Cas. (D. C.) 340– 3-1908.

'Trade-Mark Cases, 100 U. S. 82–92. Kipling v. G. P. Putnam's Sons, 120 Fed. 631, 635.

pure monopoly: it must be a monopoly to effect its purpose. A trade-mark, "generally speaking, means a distinctive mark of authenticity, through which the products of particular manufacturers or the vendible commodities of particular merchants may be distinguished from those of others.""

Judge Vann, of the Court of Appeals of the State of New York, in 1891 made this simple statement: "The function of a trademark is to point out the maker of the article to which it is attached." It would be difficult to improve upon this definition had Judge Vann used after the word maker the words "or vendor." &

The trader adopts a mark in order that he may create a distinguishing brand or name for his goods, and as this mark is used it gradually comes to identify his goods to the purchasing public, and becomes a trade-mark. "The gist of a trade-mark is its association in the public mind with a product." "It must be designed, as its primary object and purpose, to indicate the owner or producer of the commodity, and to distinguish it from like articles manufactured by others." 10

9

A trade-mark is not limited in function to indicating merely the owner or producer of goods and nothing more. It may at the same time be a badge of quality. But it must indicate the origin of the goods at least to the extent that the public considers that all goods bearing that mark come from one and the same person as the maker or seller thereof.

§ 188. Nature of a Trade-Mark. — A trade-mark is auxiliary to the good-will of the business. It is inseparable from it, and title to the trade-mark cannot be transferred apart from the business. There is no such thing as a trade-mark in gross.

11

Whether or not a trade-mark is property has often been discussed.12 The present consensus of opinion is that a right to the

7

Elgin Nat'l Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 673. Waterman v. Shipman, 130 N. Y.

301-11.

'Pflugh v. Eagle White Lead Co., 185 Fed. 769, 771.

10 Columbia Mill Co. v. Alcorn, 150 U. S., 460 at 463.

11 "Dissociated from merchandise to which it properly appertains," a trade

mark "lacks the essential characteristics which alone give it value, and becomes a false and deceitful designation. It is not by itself such property as may be transferred."

12 MacMahan Pharmacal Co. V. Denver Chemical Mfg. Co., 113 Fed. 468, 475 (C. C. A., 8th Cir. 1901). Weston v. Ketcham, 51 How. Pr. (N.Y.) 455; Jackson Corset Co. v. Cohen, ^?

exclusive use of a trade-mark is property. It is well established also that the association between merchandise and a name or design which, in its ordinary use and meaning, is in the public domain is the property of the concern with which such name or design is thus commercially related in the public mind. "Common-law trade-marks, and the right to their exclusive use, are of course to be classed among property rights." Hanover Star Milling Co. v. Metcalf.12 See discussion of this question in this opinion.

The trade-mark is the expression, the symbol, of part or all of the good-will of the business using the mark. A trade-mark is just as necessary to the creation and development of good-will as words are to the use and expression of thoughts. Separate from the good-will of the business it identifies, it is useless, valueless; similarly good-will separated from the trade-marks by use of which the public have created it, is valueless. "Ivory Soap' has a valuable good-will. But assume that the word "Ivory" ceases to have any association with this soap and the good-will of the makers of it is valueless so far as this brand of soap is concerned.

"In its last analysis a trade-mark is a name or sign or symbol, which indicates or certifies that a given article or commodity is in reality what it claims or purports to be. It has no intrinsic value whatever. It is merely a certificate of the truth." 13 It is a badge of commercial genuineness authenticity.

It is not necessary to the validity of a trade-mark that it be invented or devised by the one using it. It even may be forced upon him by public usage against his wishes.

"The ordinary trade-mark has no necessary relation to invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. It is often the result of accident rather than design, and when under the Act of Congress it is sought to es

App. Cas. D. C. 482; Jaysee Corset Co. (In re), 201 Fed. 779, are only a few of many authorities on this point.

120 240 U. S. 403-413.

13 Commonwealth v. Kentucky Distilleries & Warehouse Co., 132 Ky. 521 (1909), holding that a trade-mark was

not taxable property under the statute, and remarking that no case had been cited in which either a trade-mark or the good will of a business had been treated as property for the purposes of

taxation.

tablish it by registration, neither originality, invention, discovery, science nor art is in any way essential to the right conferred by that act." 14

Nor does a trade-mark confer or imply any monopoly in goods, as does a patent. 15 Its primary object is to preserve the identity the personality of merchandise, not merely the rights of him who first devised it, or first used it as a badge of origin. This is clearly shown by the history of many famous trade-marks. The Singer Company's rights in the patents that it has owned expired with the term of the patents. Anyone thereafter could use the ideas contained in the letters patent; but no one is allowed to make free with the celebrity that this company acquired under the name "Singer" as a maker (not inventor) of sewing machines. 16 The patent owner is protected in his ownership of his patent as a right vested in him; the trade-mark is protected, in part, at least, to shield the public from imposition, confusion and deceit.

Monopoly in the use of the mark itself is necessary to protect the trader against others who, by its use or simulation, may seek to mislead the public, and so divert trade from the owner of the mark.

§ 189. Essential Elements of a Technical Trade-Mark. - The essential elements or characteristics of a technical or pure trademark are four in number.

1. It must be a word or device that lawfully may be appropriated by the trader to distinguish his specific products, without violating rights of other persons to use the mark.

2. Its main or primary function must be to indicate the origin of the goods; not primarily to distinguish a particular grade, style or size of the trader's product." It may incidentally indicate grade or quality also, but it must be capable of distinguishing one article from all others as regards origin or ownership.

14 Trade-Mark Cases, 100 U. S. 82, 94-1879; Canal Co. v. Clark, 13 Wall. 311; Wm. J. Moxley Co. v. Braun & Fitts Co., 93 Ill. App. 183.

15 "The plaintiff's trade-mark does not give him the rights of a patentee in property manufactured under a patent. His trade-mark is to secure him and the public from deception and fraud as to the origin and source of these goods and of similar goods

sold in the market." Garst v. Hall & Lyon Co., 179 Mass. 588, 591 (1901).

16 Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169.

17 See Beadleston & Woerz v. Cooke Brewing Co., 74 Fed. 229 (C. C. A. 7th Cir. 1896), in which, there being a common trade-mark for all grades, "Imperial" was applied to one of three grades of beer.

3. A trade-mark must have been used to some extent on the goods it is designed to identify. It is not enough to select a mark, or having selected it, to advertise it. It must be used as a trademark upon goods actually sold or offered for sale in the usual course of business, 18 and it must be physically affixed to the goods or to the packages containing them.18

4. Its use as a trade-mark must not be against public policy; that is, it must not be either false or deceptive in its meaning or implication, or indecent, scandalous, etc.

$ 190. Non-Essentials of a Trade-Mark.-A trade-mark need not be novel,19 nor is it necessary that on its face it indicate the name or identity of the proprietor, or show the origin or ownership of the goods.20

Registration is not essential to the validity of a trade-mark, nor does registration make the mark registered into a trade-mark. The law of trade-marks long antedates registration statutes, and is a development of the common law. Certain advantages may be derived from registration; but failure to register does not prejudice one's common-law rights in a trade-mark.21

The fact that one does register what is a good common-law trade-mark does not impair his common-law rights or compel him to resort to the statute for protection. Registration, irrespective of the provisions of the statute, may, however, be useful as evidence of intention to claim a mark as a trade-mark and of a claim of title to it, and of what the registrant claimed his mark consisted when he registered it.

§ 191. Features of the Dress or Appearance of Goods Cannot Ordinarily Become Technical Trade-Marks.—The physical fea

18 See chapter on "Acquisition and Manner of Use of Trade-marks."

18 Waldes v. International Manufacturers' Agency, 237 Fed. 502 (1916).

19 "If it is new in its application to the particular merchandise in controversy, it may be entitled to protection." Wm. J. Moxley Co. v. Braun & Fitts Co., 93 Ill. App. 183, 186 (1900).

20 Godillot v. Harris, 81 N. Y. 263, 266 (1880); Dennison Mfg. Co. v.

Thomas Mfg. Co., 94 Fed. 651, 656 (1899); citing authorities to the effect that it is enough that the mark has acquired by association an understood reference to origin.

21 See Chapter I, § 3, and see Chapter "Registration under U. S. Statute." Under the peculiar wording of the California statute, it was at one time held in that state (Whittier v. Dietz, 66 Cal. 78, 1884) that a trade-mark must be filed for record to be protected, but the statute was afterwards changed.