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SOME SUGGESTIONS CONCERNING A TRADE-MARK

REGISTRATION ACT.

BY

EDWARD S. ROGERS,

OF ILLINOIS.

Every lawyer knows the client who tiptoes into his office, closes the door carefully and, with a great show of secrecy, announces that he has hit upon the best name for a soda cracker, a patent medicine, a soft drink, or what not, that human ingenuity ever conceived. He wants it protected before any one can steal it from him. He wants it "Copyrighted." This is the expression most commonly used. He seems to be under the impression that some incantation can be performed by means of which he will be able to secure himself in its exclusive use. His lawyer, and I have known such, may be under some similar delusion. Enormous secrecy is religiously maintained all the while. This is not burlesque, it is happening all the time and is due to a very general ignorance of what a trade-mark is and how the right to one is acquired.

A trade-mark is a means by which merchandise is identified. It is purely utilitarian, its function is commercial, it may be the result of an accident, in any event it does not depend upon invention or discovery or intellectual creation and need not be original. Its creator is not necessarily a genius. Its primary function is to indicate in an unmistakable fashion who is the maker or seller of the merchandise to which it is attached and finally the right to it is not statutory but is a common law right of respectable antiquity. It is not the creation of statute. Historically, trade-marks are one of the oldest of human institutions, and antedate all statutory protection.

As a matter of fact, the right to a trade mark is created solely by such adoption and use and continuous occupancy of the market with articles marked with it, as to give to the mark an understood reference to the origin of the goods bearing it. A trade-mark is an incident to a business, a symbol of good will, not an abstraction.

The notion that a trade-mark is analogous to copyright was sufficiently deep-seated to cause the first federal registration act to be based on that provision of the Constitution, which authorizes Congress to secure to authors and inventors for limited times the exclusive right to their respective writings and discoveries and formed part of an act entitled "An Act to revise, consolidate and amend the statutes relating to patents, trade-marks and copyrights." This statute was declared unconstitutional, on the ground that a trade-mark was neither a writing nor a discovery, and that such legislation could not be founded upon the constitutional power given to Congress to protect authors and inventors. Then an act was passed under the commerce clause and treaty making power permitting the registration in the Patent Office of trade-marks used in commerce with foreign nations or with Indian tribes. In 1905 the present trade-mark act was passed, permitting the registration in the Patent Office of trade-marks used in commerce among the several states, with foreign nations or with the Indian tribes.

There was a time before the present revision of 1909 when the copyright act was the most conspicuous example of bad draftsmanship that ever disgraced our statute books. The revision and codification of 1909 gave us for the first time a simple and understandable copyright statute. Most of the litigation concerning it has not been disputes about its terms and assertions that because of obscurity they could mean a variety of things, but that they were clearly expressed and could not possibly mean what they unmistakably said. This surely is a virtue. As far as the trade-mark act is concerned, no one knows yet what it means and we have lived under it since 1905, and the amendments of the present year have only deepened the mystery.

In contrast to the orthodox American theory that the common law creates the right and registration is only evidence of it, the opposite idea of statutory trade-mark protection should be noted that registration creates the right. This doctrine is in force in substantially all, if not in all, Latin-American countries, where registration creates ownership; where, unless and until a mark is registered, it is available for anybody's appropriation, and, conversely, when it is registered, it becomes incontestably the property of the registrant, for the title based on registration. cannot be disputed.

There has been much loose talk condemnatory of this theory of trade-mark protection, and the statutes passed in conformity with it. Horrible examples are cited where valuable marks owned, according to our nations, by American citizens, have been pirated and appropriated by foreigners for their own benefit. This condemnation, it seems to me, displays a singular insularity of view. It assumes that anything different from what we are used to is necessarily wrong, and the asserted dishonesty of these so-called piratical registrations is much emphasized. As a matter of fact, these foreign laws have been well known for many years. The theory upon which they are enacted and enforced has been perfectly well understood. The foreign owner of trade marks registered by natives could in most cases, have availed himself of these statutes and their protection, and neglected to do it. The enterprising, or, if you will, the dishonest foreigner, simply beat our people to it. The fault is not so much with the foreign law, as the failure of our own people to take advantage of it. Lack of intelligent self-help has been the real cause of most of the trouble, not the inequities of the foreign law or the iniquities of the foreigner. No one has ever criticised these statutes within my hearing on the ground that they are inefficient. Their very efficiency is the cause of the complaint. No one says that these statutes do not protect trade marks. They do, most effectively.. Probably no such statute could be or ought to be passed in the United States, but I cannot forego the chance which this paper gives, of calling attention to what seems to me a wholly irrational objection on the part of the American business community to these statutes.

The other extreme of statutory trade-mark protection is the one which we have in this country, and upon which our Federal acts have been based. This theory is predicated upon the notion that trade-marks owe their origin to the common law and that registration creates nothing, confers nothing, and is procedural only a public record of the claim of ownership previously acquired by adoption and use.

No one, I think, will dispute the assertion that our present act, like its predecessors, is a slovenly piece of legislation, characterized by awkward phraseology, bad grammar and involved sentences. Its draftsmen had a talent for obscurity amounting to genius.

Taking up a few of the things which are moderately clear from the act, the first thing which strikes the reader is in the first section. Registration may be effected by the owner of a trademark, used in interstate or foreign commerce or commerce with the Indian tribes.

Who is the owner of a trade-mark? There is nothing in the act on the subject, so the common law definition must be sought, and here we find that the owner of a trade-mark is he who was the first to adopt and use it. The next word in the act, except a. preposition and an article, is "trade-mark"; this word is not defined so we must again go to the common law where we learn that a trade-mark is a word, letter, device or symbol or some combination of these, used in connection with an article and either inherently or by association pointing distinctly to the origin or ownership of the article to which it is applied. In short, a trade-mark is the means by which manufacturers and merchants identify their manufactures and merchandise. The trade-mark to be registrable must, under the terms of the act, already have been used in interstate or foreign commerce or commerce with Indian tribes. It is, therefore, plain that the act does not create anything.

It is then provided that certain marks shall not be registered and that nothing shall prevent the registration of any mark actually and exclusively used as a trade-mark by an applicant or his predecessor for ten years next preceding February 20, 1905. This provision was adopted from the English act and was spoiled in the taking. In the English act the phraseology is understandable and a definite purpose was sought to be accomplished, namely, to permit the registration of non-technical trade-marks which had long been in use. The mischievous and senseless insertion of the word "exclusive" in our statute effectually interferes with its efficiency and destroys the benefits which are made possible by the English act. It was first held that "exclusive" meant the right to exclude. But later that it means exclusive in fact-sole-and that any use by others than the applicant, of the mark sought to be registered, even in purely a descriptive sense, or an infringing use, prevents registration under this provision, though the Supreme Court has strongly intimated otherwise. This must be the law; it is monstrous that

a single act of piracy should destroy the mark pirated, or deprive the owner of any right to which he would otherwise be entitled.

Another singularly unhappy expression used at least twice in the act, has given rise to much dispute and uncertainty. It is provided that no mark shall be registered which so nearly resembles a registered or known mark owned and in use by another and appropriated to merchandise of the same descriptive properties: in other words, infringing marks are not registrable. In defining infringement, the language used is "anyone who shall without the consent of the owner reproduce, counterfeit copy or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, The phrase, "descriptive properties" has been the trouble maker. A virtuoso in vagueness must have conceived it.

The rule accepted by the courts in declaring the common law was understandable enough. A defendant could not escape a charge of trade-mark infringement by contending that his goods upon which he used the complainant's trade-mark were not identical with the complainant's. The false representation which the courts aim to suppress is a false representation as to the commercial origin of merchandise, so where the goods of the parties are of such character that from the use of the same mark on both, an ordinary buyer would be likely to assume that they emanated from the same producer, the use of the mark by the defendant on such goods is restrained because it is calculated to represent that his goods are of the complainant's manufacture, or connected in some way with the complainant, and thus there is a false representation as to their origin. The use of the complainant's mark upon his goods enables the defendant to profit by the complainant's reputation and unfairly secure for his productions a credit and salability to which they are not entitled.

The trade-mark statute apparently attempts to improve upon this rule. The goods of the parties to an infringement suit concerning a registered trade-mark must be of "substantially the same descriptive properties."

When is merchandise of "substantially the same descriptive properties?" What are the descriptive properties of merchan