Transcriber's Notes:
Text enclosed by underscores is in italics (_italics_), and text
enclosed by equal signs is in bold (=bold=).
Many illustrations contain text, which is marked by indenting it more
than the illustration captions.
Additional Transcriber's Notes are at the end.
* * * * *
THINGS TO KNOW ABOUT TRADE-MARKS
A MANUAL OF
_Trade-Mark Information_
[Illustration]
PUBLISHED BY
J. WALTER THOMPSON COMPANY
44 EAST 23rd STREET
NEW YORK
_Branch Offices_
CHICAGO CLEVELAND ST. LOUIS TORONTO
BOSTON CINCINNATI DETROIT LONDON
* * * * *
COPYRIGHT, 1911
BY J. WALTER THOMPSON COMPANY
* * * * *
[Illustration:
J. WALTER THOMPSON COMPANY
Est. 1864
]
The Purpose of This Book
Our idea, in preparing this little book, is to set forth, in clear and
simple language, the main features of the law relating to trade-marks
and to illustrate its application by specific examples of well-known
trade-marks now in use.
To an advertiser who has had but little experience in registering
trade-marks, the law, with a congested mass of precedents surrounding
it, seems to be a legal maze.
But its intricacy is more apparent than real. The law is quite clear
and explicit when one has the patience and experience in such matters
to get to the bottom of it. We have endeavored to write this book in
language so clear that any business man will understand it, and we feel
sure that it will give any one a good working knowledge of trade-mark
requirements.
It has not been our intention to produce an exhaustive treatise on the
subject. Such a treatment of the law of trade-marks and its allied
subject of unfair trade would require a large volume, and the long and
intricate discussion of minor points necessary in a work of that kind
would be wearisome and perhaps unintelligible to the lay reader.
Nor have we discussed the origin of the custom of identifying
merchandise by trade-marks. This phase of the subject--trade-marks in
their historical aspect--is interesting in an academic sense, but it
has little or no bearing on the trade-mark situation of to-day.
For further study of the trade-mark law and the allied subject of the
law of unfair trade, we advise the reading of Hesseltine's "Law of
Trade-Marks and Unfair Trade" (Little, Brown & Co., 1906); and Nims
on "Unfair Business Competition" (Baker, Voorhis & Co.). Both of
these works are legal in their treatment of the subject and in their
phraseology. Another work containing much information on this subject
is Clowry Chapman's "Law of Advertising and Sales", in two volumes,
published by the author.
J. WALTER THOMPSON COMPANY
[Illustration: J. Walter Thompson]
PRESIDENT.
Table of Contents
Chapter Page
Introduction 7
I. Digest of The Trade-Mark Law 13
Property in Trade-Mark Rests Upon Common Law 13
Conditions of Registration 14
Ten-Years Clause 16
How to Apply for Registration 17
Procedure of the Patent Office 20
Registration in Foreign Countries 23
Classification of Merchandise 23
State Trade-Mark Laws 25
II. Essentials of a Valid Trade-Mark 26
Portrait of a Living Individual--When it may be
Registered 27
Trade-Mark Must not be Descriptive 28
Trade-Mark Must not Misrepresent 31
Trade-Mark Must not Resemble Previously
Registered Mark for Same Class of Merchandise 32
A Geographical Name is not Registrable 34
Trade-Mark Must not Contain Red Cross Insignia 36
Restrictions as to Registering Names 37
Trade-Mark Must not be Fraternal Society Emblem 39
Trade-Mark Must not Consist of Flag or Coat-of-Arms 40
A Form, Color, a Shape, or a Material Not Registrable 40
Trade-Mark Must not be Against Public Policy 42
Affixation 43
III. Advertising Characters 45
IV. Infringement 52
V. Assignment 69
VI. Trade-Marks in Canada 73
VII. How to Devise a Trade-Mark 76
Introduction
If you were to ask any dozen men among your acquaintances, or any
hundred men, to name the greatest writer that has ever lived, the odds
are perhaps as great as a hundred to one that every man would say
"Shakespeare."
This virtual unanimity of opinion would not have its origin in a
conscious comparison of authors and their works, for we might as well
be frank with each other and admit that not more than one of us in a
thousand has ever read enough of Shakespeare to form any opinion that
would be worth listening to.
We take Shakespeare on faith.
We have been taught that Shakespeare was a transcendent genius, the
greatest man that ever put pen to paper, and we believe it.
Shakespeare is in evidence on every hand. We quote him every day. He
is well advertised. And, needless to say, his reputation as a writer
is far greater to-day than when he lived over a wig-maker's shop in
London, or even when his fortune had been made, and he had retired with
his jig-saw coat-of-arms to the "lordly mansion" on the hill back of
Stratford.
He has been advertised for three centuries with praise originating from
a thousand sources, and his reputation is now steeped head and ears in
Cumulative Results.
Shakespeare's name has become a sort of trade-mark of good literature.
If a meddling antiquarian should thoughtlessly add to the afflictions
of the intellectual life by unearthing a doggerel sonnet of Thomas the
Rhymer to which some clerkly scribe had affixed, in error, the name of
William Shakespeare, learned men would read it, and nodding wisely,
would doubtless say, "Pretty good stuff"--or the scholarly equivalent
of that phrase.
The force of _recognized distinction_ is tremendous, not only in
literature, but in business, in science--in short, it is one of the
most valuable assets in every field of human endeavor.
A commodity may attain a height of distinction, in the public's
estimation, that places it, among other commodities of its class, on
the level attained by Shakespeare in literature.
Apollinaris among table waters; Heinz "57" among pickles; Hartshorn
rollers among window shade appliances; Coca-Cola among soda fountain
drinks; Huyler's among candies; Uneeda Biscuit among soda crackers;
Horlick's among malted milks--each of these products has become, by
reason of advertising combined with intrinsic merit, the standard of
quality in its own class.
It is interesting and easy to make practical tests to ascertain what
advertised commodities have made a genuine and far-reaching impression
on the buying public.
Take talcum powder, for example.
Ask your wife, daughter, sister, stenographer--and as many other women
as are necessary to strike a general average--to write down the name of
what each of them considers the standard talcum powder. Then, when all
the returns are in, figure up the result. There are hundreds of brands
of talcum powder sold in the United States; but you will find in your
canvass that only three or four are mentioned at all, and that one of
them leads all the rest by a decisive majority. We could tell you what
the figures produced by your experiment would show the leading brand to
be, but a modest reserve in self-assertion forbids us to say more than
that its name begins with the letter M.
The enviable position of this particular talcum powder is the sum total
of many years' advertising and trade-mark publicity. It has become a
permanent feature of our commercial life; a sort of Bunker Hill in the
history of advertising. The natural result is that its trade-mark is
enormously valuable.
Advertising capitalizes human faith, and faith is a mental impression.
It is a quality of the human mind that the most _profound impressions
are made by things_--not by abstract ideas. Consequently, successful
advertising must be tied hard and fast to a name (or trade-mark) and
this trade-mark must be distinctive, and not easy to confuse with
something else. It must be easy to remember, _and it must identify the
advertised product_.
The functions of a trade-mark in advertising may be concisely stated as
follows:
1st. As a certificate of genuineness of the product to which it is
affixed. _This protects the public._
2nd. As an identifying mark, owned by the manufacturer, and in the
ownership of which the law protects him in order that no competitor
may reap the advantage of the selling effort and advertising
put forth by the owner of the trade-mark. _This protects the
manufacturer._
In its legal aspect, a trade-mark is therefore a device for protecting
both the manufacturer and the public from fraud. In this connection,
we quote the legal definition of a trade-mark as given by the Federal
Court in the case of _Shaw Stocking Company vs. Mack_:
"Broadly defined, a trade-mark is a mark by which the wares of the
owner are known in trade. Its object is twofold; first, to protect
the party using it from competition with inferior articles; and
second, to protect the public from imposition.... The trade-mark
brands the goods as genuine, just as the signature of a letter stamps
it as authentic."
The law of trade-mark usage, reinforced by a vast array of legal
decisions, is a growth of the last sixty years.
When trade was restricted within narrow geographical limits by
formidable conditions; when both goods and news traveled slowly;
when selling effort was principally made by word of mouth, there was
no genuine need in the commercial world for the legal regulation of
trade-marks, or for laws designed to repress unfair trade.
In the days of our forefathers manufacturers made goods; they did not
sell them. Goods sold themselves. And, consequently, the expanding
circle of a manufacturer's trade rippled out with exceeding slowness.
A national sale of any product was the result of perhaps several
generations of slowly expanding effort--and when once established,
it was generally entrenched far beyond the reach of competitors or
substitutes. People lived simply, and manufactured articles were few.
It is true that trade-marks existed then--as they have since the
beginning of organized commerce--but they were few in number, compared
with their multiplicity to-day, and their owners were adequately
protected by their ordinary common law rights.
Quickly moving transportation and highly developed methods of
distribution and sale have changed these conditions.
To-day the swift shuttle of commerce flies to the ends of the world.
Advertising has arisen, and has become, in a generation, the most
important of selling forces. People read and believe the printed
word, and they buy goods manufactured a thousand miles away by some
advertiser of whom they had never heard until they read of him and his
wares. Society has become intricate and complicated. Thousands are
striving to do what one man strove to do a hundred years ago.
From this criss-cross of human activities has been woven the fabric
of the law of unfair trade, which is the progenitor of the trade-mark
statutes. The intent of this body of law is to give the widest possible
freedom to the play of individual energy in business consistent with
justice to others in trade, and to the public.
The trade-mark is the connecting link between the manufacturer and
the ultimate consumer. By the use of trade-marks, widely advertised,
manufacturers are able to build up a trade that becomes, to a great
degree, independent of jobber, wholesaler, and retailer. In the public
mind a trade-mark grows, in time, to mean a certain standard of
quality, workmanship and material.
Advertised products are generally higher in quality than similar
products that are not advertised. The reason is that an investment
in enough advertising space to make any commodity known nationally
requires a considerable outlay of money, besides a well-developed
selling organization to coöperate with the advertising, and harvest its
results. And this must be done continuously, and that means that the
combined advertising and selling effort must be permeated with a sense
of stability and permanency.
The manufacturer who is investing money in advertising, year after
year, feels that he has too much at stake to endanger his possibilities
by putting out inferior goods. Advertising is a systematic method of
creating Good Reputation--but when Reputation is only an empty form of
words, with nothing tangible behind it, the chances of its lasting are
rather slight.
The manufacturer of inferior goods is not looking very far into
the future. He is not trying to build permanently on the basis of
reputation, but to squeeze out Right Now every cent of possible profit.
The result of this attitude of mind is that he does not advertise.
Consequently it is not surprising to find that the best merchandise
on any retailer's shelves consists of advertised goods, and that,
moreover, concerns that advertise have the most efficient sales
organizations, as well as the most enlightened relations with retailers
and the public.
The best trade-mark ever devised is not worth a cent until it has
become known as an identifying mark of a commodity. A trade-mark has
no inherent, natural value. Whatever it is worth is the result of
advertising in some form, plus the desirable qualities of the goods
that it represents.
* * * * *
Some trade-marks are words which have a natural affinity for the
language, and they slide into common speech as easily as a cupful of
water melts into the ocean.
A notable instance of this is "Cracker Jack." This word has become an
integral part of our common language, and is used to mean a hustler,
a thing of excellence, a fellow who gets there, a machine that runs
smoothly, a well-played game, and in other senses. But it is probable
that not one person in a hundred who uses this word knows that it is a
registered trade-mark, and that it is a name applied to a mixture of
popcorn and peanuts, combined with molasses, or some other sweetening.
It is a delicious concoction, as any reader of this book may ascertain
for himself.
The owners of Cracker Jack have not advertised. They have allowed
the immense asset of their trade-mark--a by-word on the tongues of
millions--to go to waste.
The word "Celluloid" is protected by the trade-mark law. The article
celluloid can be manufactured by any one who cares to go into the
business of making it, but only the owners of the trade-mark can call
their product celluloid. This is not generally known, probably not
even by the well-informed class of readers among whom this book will
circulate--a state of public ignorance due to lack of advertising.
"Kodak," an artificial word--a registered trade-mark--widely
advertised, has grown into common use, and is now used by many persons
to mean a small hand camera of any make, though (as every reader of
this book knows) a real Kodak is made only by the Eastman Company.
In this case the owners of the trade-mark have made their advertising
keep pace with the diffusion of the word.
+---------------------------------------------+
| "KODAK" |
| |
| Is our Registered and |
| common-law _Trade-Mark_ |
| and cannot be rightfully |
| applied except to goods |
| of our manufacture. |
| |
| If a dealer tries to sell you a camera |
| or films, or other goods not of |
| our manufacture, under the Kodak |
| name, you can be sure that he has an |
| inferior article that he is trying to |
| market on the Kodak reputation. |
| |
| _If it isn't an Eastman, it isn't a Kodak._ |
| |
| EASTMAN KODAK CO., |
| |
| ROCHESTER, N. Y., _The Kodak City_. |
+---------------------------------------------+
_Special advertising to counteract the
indiscriminate use of the word "Kodak."_
It is easier to say Kodak than it is to say "portable camera". There is
a real need in the language for such a word, and "Kodak" has come to
supply it.
Trade-marks of this character, which seem to supply a genuine
linguistic need, are, in a sense, _too good_. The indiscriminate
application of "Kodak" to a certain class of cameras, irrespective
of origin, has caused the Eastman Kodak Company to publish many
advertisements with the special purpose of calling attention to the
correct use of the word.
The word "O'Sullivan" is another instance of a trade-name acquiring a
secondary meaning through advertising. It instantly brings to mind the
thought of rubber heels. In a popular play an actor says, "I got away
from there on my O'Sullivan's" and every one in the audience knows that
he means to say that he left as quietly as he could.
* * * * *
There comes a time, in the history of every manufacturer who advertises
extensively and successfully for a long period, when his trade-mark,
and the name of his product (in many cases they are the same), become
by-words of common speech, known to all men, and incorporated into our
fluid and elastic language. When an advertiser reaches this point, he
has generally attained the highest possible advertising success. In
other words, advertising has done for him all it can do, and he has
only to keep the stream of advertising going to hold what he has.
CHAPTER I
A Digest of the Trade-Mark Law
In February, 1905, Congress passed an act entitled "An act to authorize
the registration of trade-marks used in commerce with foreign nations
or among the several states or with Indian tribes, and to protect the
same."
This act went into effect on April 1, 1905. With its amendments it is
known as the United States Trade-Mark Law. Its provisions should be
known by every manufacturer or advertiser who is using, or who intends
to adopt, a trade-mark.
Property in Trade-Marks Does Not Rest upon the Statute, But upon the
Common Law.
It should be stated here that ownership in a trade-mark is a property
right resting in the common law. This right is, therefore, not a
creation of the statute. The purpose of the statute (or Act of 1905)
is to systematize the registration of trade-marks, and to provide a
definite procedure both for recording and protecting them. A trade-mark
may be legally valid without having been registered, and on the other
hand, a registered mark may be proved legally invalid. Registration is
prima facie evidence of validity, but it is not conclusive evidence.
Upon this subject the Supreme Court of the United States has 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 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 infringements. This
exclusive right was not created by the act of Congress and does not
now depend upon it for its enforcement."
The common law rights of the owner of a trade-mark are the same now as
they were before the passage of the act. In fact, the statute itself
contains this provision: "Nothing in this act shall prevent, lessen,
impeach or avoid any remedy at law, or in equity, which any party
aggrieved by any wrongful use of any trade-mark might have had if the
provisions of this act had not been passed". (Section 23 of Act of
1905.)
The advantages of registration are readily apparent, however. In
an action at law against infringement, the owner of a registered
trade-mark can produce at once the record of its _adoption and legal
registration_. Without registration, it would be necessary for him to
go through an involved legal process to prove his rights in the matter.
Registration in the United States Patent Office brings any litigation
involving the right to use the trade-mark within the scope of the
Federal court, with a judiciary trained in such cases. When a
trade-mark is not registered under the Federal law a suit pertaining to
it cannot be heard in the United States courts, unless the amount in
dispute exceeds two thousand dollars, and the parties on the opposing
sides are not citizens of the same state.
Under the Act of 1905 about 39,000 trade-marks had been registered, up
to September 1, 1911.
Conditions of Registration
An individual or a corporation has a right to register a trade-mark
under the United States law if the trade-mark for which registration is
sought belongs to the applicant and is used by him:--
1st. In commerce among the several states;
2nd. Or, in commerce with foreign nations;
3rd. Or, in commerce with the Indian tribes;
Provided the owner of the trade-mark resides within the territory of
the United States (which includes all territory under United States
control), or has a manufacturing establishment situated in United
States territory, or resides in any foreign country which affords, by
treaty, similar privileges to citizens of the United States.
The law states, as a condition of validity, in explicit terms that the
trade-mark must not only belong to the applicant, but must be "_used
by him_." A trade-mark cannot be registered until it has actually been
used on goods, and the use must be continued long enough, and must be
of such a nature as to indicate a genuine intention on the part of the
owner to adopt the trade-mark as a permanent accessory of his business.
The reason for this is evident. If any citizen could appropriate and
sequester a trade-mark by paying the registration fee of ten dollars,
without an intention of using it for its legitimate purpose, it does
not take much imagination to foresee a Trade-Mark Trust, with most of
the desirable trade-marks in the hands of a monopoly, to be farmed out
at a profit.
=To be Registrable A Trade-Mark Must Be:=
1st. An arbitrary symbol, or word, or words, or a combination of a
device and wording, not obviously descriptive of the commodity to
which it is to be applied.
2nd. Unlike any other trade-mark, already in use, and applied to
the same class of goods. It must not resemble the trade-mark of a
competitor, or of a potential competitor, to such an extent that the
buying public is likely to be deceived or confused by the resemblance.
3rd. Used in lawful trade.
4th. Of such a character that it may be affixed, printed upon, woven,
sewed, branded or otherwise impressed upon the product with which it
is used, or upon the package or container of the product.
=A Trade-Mark Must Not Be:=
1st. A portrait of a living individual unless the application for
registration is accompanied by the written consent of the individual
whose portrait is used.
2nd. Scandalous or immoral matter of any description.
3rd. The flag or coat of arms of the United States, or of any state,
or of any municipality, or any of the insignia thereof.
4th. The insignia of the American National Red Cross Society.
5th. The flag or coat of arms of any foreign nation.
6th. Any design or picture which has been adopted by a fraternal
society as its emblem.
7th. A design or wording identical with a registered or known
trade-mark owned and in use by another, and appropriated to
merchandise of the same descriptive qualities, or which so nearly
resembles a registered or known trade-mark owned and used by another,
and appropriated to merchandise of the same descriptive qualities, as
to be likely to cause confusion or mistake in the mind of the public,
or to deceive purchasers.
8th. Any mark which consists merely in the name of an individual,
firm, corporation, or association, unless said name is written,
printed, impressed or woven in some particular or distinctive manner,
or is used in connection with a portrait of the individual.
9th. Any arrangement of words or devices descriptive of the goods
with which they are used, or of the character or quality of such
goods. In other words, a trade-mark must not be an advertisement in
the ordinary sense of the word.
10th. Any geographical name or term.
11th. A misrepresentation of the quality, composition, character,
origin, or nature of the commodity with which it is used.
+------------------------------------------------------------+
| [Illustration] |
| Jobber Retailer |
| Manufacturer Trade-Mark Consumer |
| Advertising |
| |
| This looks like a problem in geometry, but it isn't. |
| |
| This diagram shows at a glance how Trade-Mark |
| Advertising draws a straight line between the manufacturer |
| and the consumer. |
| |
| The manufacturer who doesn't advertise has to |
| depend on the jobber and the retailer. In the majority |
| of cases his name never reaches the consumer. His |
| trade is necessarily precarious, and he is constantly |
| in danger of the kind of cut-throat competition that |
| shaves the lowest margin of profit to nothing. |
| |
| But the manufacturer who advertises has his name |
| and the name of his goods on the lips of millions of |
| people. The retailer who attempts to keep advertised |
| goods from selling is like the man who cuts off his |
| nose to spite his face. People will go elsewhere and |
| get what they want. |
| |
| We would like to talk with you about advertising. |
| Among our clients are some of the largest and most |
| successful advertisers in the United States. It will |
| cost nothing to have a talk with us--and we may be |
| able to suggest an idea or plan that will simplify |
| your sales problem. |
| |
| =J. WALTER THOMPSON COMPANY= |
| |
| =New York: 44 East 23rd Street= |
| =Boston: 201 Devonshire Street= |
| =Cincinnati: First National Bank Bldg.= |
| =St. Louis: Odd Fellows Bldg.= |
| =Chicago: The Rookery= |
| =Cleveland: Swetland Bldg.= |
| =Detroit: Trussed Concrete Bldg.= |
| =Toronto: Lumsden Bldg.= |
| =London: 33 Bedford St., Strand= |
+------------------------------------------------------------+
A special provision of the Act of 1905 legalized all trade-marks that
had been in _exclusive use_ by the applicant for ten years prior to
the passage of the act, and this provision applies even to trade-marks
of ten years' standing that, because of their character, could not be
registered under the act. The language of the act dealing with this
subject is as follows:
"Nothing herein (in the Act of 1905) shall prevent the registration
of any mark used by the applicant or his predecessors, or by those
from whom title to the trade-mark is derived, in commerce with
foreign nations or among the several states, or with Indian tribes,
which was in actual and exclusive use as a trade-mark of the
applicant or his predecessors from whom he derived title for ten
years next preceding the passage of this act." (Section 5, Act of
1905.)
[Illustration:
Red Cross Shoe
"It Bends with your Foot."
_The trade-marks of the Red Cross Shoe are the Red Cross shown below
and the design shown above._
KROHN FECHHEIMER & CO.
CINTI. U. S. A.
]
There are many trade-marks registered under this ten years' clause.
Manufacturers are prohibited from using the insignia of the Red Cross
Society as a trade-mark, but there is a Red Cross Shoe, and the
products of the well-known druggists' specialty house of Johnson &
Johnson bear a Red Cross symbol. In both cases, their right is based on
long and continuous use antedating the act of 1905, which especially
exempts such cases.
How to Apply for Registration
The registration of trade-marks is under the supervision of the
Commissioner of Patents, and regular forms for registration are
prescribed. Copies of these forms may be obtained by applying to the
Patent Office.
In applying for trade-mark registration, the following provisions of
the law must be observed:
1st. The applicant must file a _Petition_ in the Patent Office,
addressed to the Commissioner of Patents. This petition must be in
regular form, and should be signed and dated.
[Illustration:
B.V.D.
_A valuable and widely advertised trade-mark. Can you guess what the
three letters mean?_
]
[Illustration:
TRADE MARK.
=CRESCENT
GOLD FILLED.=
_A trade-mark of the Keystone Watch Case Co._
]
2nd. With the petition a _Statement_ must be forwarded. This document
must give the name, domicile, location and citizenship of the
applicant; the class of merchandise and the particular description of
goods comprised in such class to which the trade-mark is appropriated;
a statement of the mode in which the trade-mark is to be affixed to
the goods; and the length of time during which the trade-mark has
been used. It is not necessary to give a written description of the
trade-mark itself except when it contains colors not shown in the
drawing. This statement must be signed by the applicant. Where a
corporation is the applicant, the secretary should sign the statement.
When a partnership is the applicant, any partner can sign, but the
names of all the members of the firm must be given.
[Illustration:
CHIFFONETTE
VEILINETTE
MALINETTE
_Trade-marks applied to fabrics and registered by Theo. Tiedemann &
Co._
]
3rd. There should also be forwarded to the Patent Office, at the same
time, a _Declaration_ of the applicant, sworn to before a notary
public, to the effect that he believes the statements made in his
application are true; that he believes himself to be the owner of the
trade-mark sought to be registered; and that said trade-mark is used by
him in commerce among the several states of the United States, with the
Indian tribes, or with foreign nations; and that the drawing sent with
the application truly represents the trade-mark sought to be registered.
4. With this application there must be filed a _Drawing_ of the
trade-mark, made according to the following specifications: The size of
the sheet on which the drawing is made must be exactly 10 x 15 inches,
and the sheet must be of pure white paper, corresponding in thickness
to two-sheet Bristol board. The surface of the paper must be calendered
and smooth. India ink must be used. One inch from its edges a single
marginal line must be drawn, as shown in the accompanying cut, leaving
the dimensions inside the border exactly 8 x 13 inches.
[Illustration: _The distinctive and eye-catching trade-mark of 20-Mule
Team Borax._]
Within this border, the drawing and signatures must be included. One of
the shorter sides of the sheet is regarded as its top, and measuring
downwardly from the marginal line, a space of not less than 1-1/4
inches is to be left blank for the heading of title, name, number
and date. All drawing must be made with the pen only. Every line and
letter, including signatures, must be absolutely black. The name of
the proprietor of the trade-mark, signed by himself, or his attorney
of record, must be placed at the lower right-hand corner of the sheet
within the marginal lines.
[Illustration:
The size of the sheet must be exactly
10 x 15 inches.
+--------------------------------------+
| |
T| |
h| |
i| |
s| |
| |
s| |
p| |
a| |
c| |
e| |
| |
m| |
u| |
s| Victor |
t| |
| |
b| |
e| |
| |
t| |
h| |
i| |
r| |
t| |
e| |
e| |
n| |
| |
i| |
n| |
c| Proprietor. |
h| |
e| By. |
s| |
.| Attorney. |
| |
+--------------------------------------+
<--This space must be eight inches.-->
=A Diagram Showing Method of Making Drawing=
_The drawing that accompanies an application for registration of a
trade-mark must be made exactly on this pattern. It is essential that
these directions be followed._
]
[Illustration:
Onoto
_Coined word used as the name of a fountain pen._
]
[Illustration:
Stork Baby
TRADE SHOES MARK
_The stork is the appropriate and suggestive trade-mark of the Stork
Co. manufacturers of baby things._
]
5th. With the application five _Specimens_, or facsimiles, of the
trade-mark as actually used upon the goods, must be sent to the
Commissioner of Patents.
6th. The _Fee_ for registering a trade-mark is ten dollars, and this
amount should be sent with the application.
[Illustration:
TRADE MARK
_Tapestry Brick_
REGISTERED IN U. S. PATENT OFFICE
_Trade-mark moulded into the reverse side of every Tapestry Brick._
]
The foregoing is a brief resumé of the rules for registration. Those
intending to register trade-marks should obtain exact forms from the
Commissioner of Patents.
A certificate of registration remains in force for twenty years, and it
may be renewed from time to time, upon expiration, for like periods of
twenty years, upon payment of a renewal fee of ten dollars.
The owner of a trade-mark may prosecute his own application for
registration, but he is advised, unless familiar with such matters, to
employ a competent attorney. A register of attorneys is kept in the
Patent Office, on which is entered the names of all persons entitled
to represent applicants before the Patent Office in the prosecution
of applications for patents, and any registered attorney will be
recognized in the prosecution of applications for registration of
trade-marks.
Procedure of the Patent Office
The examiner in charge of trade-marks examines all applications for
registration. If, after examination, registration is refused, the
applicant will be notified, and the reasons for refusal stated, in
order that the applicant may judge of the propriety of prosecuting his
application further.
If, on examination of an application, it appears that a trade-mark is
entitled to registration, the mark will be published at least once in
the Official Gazette of the Patent Office. Such publication shall be at
least thirty days prior to the date of registration.
[Illustration:
SW
COVER THE EARTH
_A Sherwin-Williams advertising symbol._
]
If no notice of opposition be filed within thirty days after such
publication, the applicant or his attorney will be notified of the
allowance of his application, and a certificate of registration will be
granted.
Under certain conditions amendments may be made in an application.
Every applicant whose mark has been twice refused registration by the
Examiner of Trade-marks for the same reasons upon grounds involving the
merits of the application, may appeal to the Commissioner, in person,
upon a payment of a fee of fifteen dollars.
From an adverse decision by the Commissioner of Patents an appeal may
be taken to the Court of Appeals of the District of Columbia.
[Illustration:
TRADE MARK
REG.
U. S. PAT. OFF.
_The well-known trade-mark of the National Lead Company._
]
If, upon examination of an application to register a trade-mark, the
examiner in charge finds that the mark for which registration is sought
is identical with, or essentially similar to, a trade-mark appropriated
to goods of the same descriptive qualities, for which a certificate of
registration has been already issued, an interference will be declared.
When an interference is declared, the matter in dispute is referred to
the Commissioner of Patents, who, under the rules of the Patent Office,
passes judgment upon the points at issue.
Any person who believes he would be damaged by the registration of a
mark may oppose the same by filing a written notice of opposition,
stating the grounds therefor, within thirty days after the publication
of the mark sought to be registered, which notice of opposition
shall be accompanied by the fee required by law ($10.00) and shall
be verified by the person filing the same before one of the officers
mentioned in Section 2 of the Act of February 20, 1905.[1] An
opposition may be filed by a duly authorized attorney, but such
opposition shall be null and void unless duly verified by the opposer,
within a reasonable time after such filing. A duplicate copy of
the notice of opposition must be filed, either with the notice of
opposition or within a reasonable time after the filing of the same.
[Illustration:
TRADE E.&W. MARK
_All men, and some women, know what this stands for._
]
Any person, deeming himself to be injured by the registration of a
trade-mark in the Patent Office, may, at any time, make application to
the Commissioner to cancel the registration thereof. Such application
shall be filed in duplicate, shall state the grounds for cancelation,
and shall be verified by the person filing the same, before one of the
officers mentioned in Section 2 of the Act of February 20, 1905.
If it shall appear, after a hearing before the examiner of
interferences, that the registrant was not entitled to the use of the
mark at the date of his application for registration thereof, or that
the mark is not used by the registrant, or has been abandoned, and the
examiner in charge of interferences shall so decide, the Commissioner
shall cancel the registration of the mark, unless appeal be taken
within the limit fixed.
[Illustration:
F A
TRADE MARK
_A weak and unimpressive trade-mark._
]
In cases of opposition, and of applications for cancelation, the
examiner in charge of trade-marks shall forward the files and papers to
the examiner in charge of interferences, who shall give notice thereof
to the applicant or registrant. The applicant or registrant must make
answer at such time, not less than thirty days from the day of the
notice, as shall be fixed by the examiner in charge of interferences.
The law directs that the owner of a registered trade-mark print, or
impress, or affix, in legible letters, the words:
=Registered in U. S. Patent Office
or
Reg. U. S. Pat. Off.=
upon such trade-mark wherever it is used, or sufficiently near it to
be discerned whenever the trade-mark is seen. The manner in which this
should be done is shown in connection with the "Fine-Form" Maternity
Skirt trade-mark on this page. When, from the character or size of
the trade-mark, or from its manner of attachment to the article, this
cannot be done, a label containing a like notice should be affixed to
the package or receptacle wherein the article is enclosed.
[Illustration:
_Fine-Form
TRADE MARK
MATERNITY SKIRT
Registered in US Pat Office_
_Shows method of exhibiting registry notice in connection with a
trade-mark._
]
It is important that this be done, otherwise, in a suit for
infringement by a party who has failed to give such notice of
registration no damages shall be recovered, except on proof that the
defendant was duly notified of infringement, and continued the same
after such notice.
Registration in Foreign Countries
American owners of trade-marks who expect to do business in foreign
countries should not neglect the registration of their trade-marks
abroad. A failure to observe this precaution has led, in some cases, to
a situation where the American owner, entering the foreign field, found
his trade-mark already appropriated. The trade-mark laws of various
foreign countries differ greatly, in some instances, from the United
States law. A manufacturer who desires to do business in a foreign
country should consult a trade-mark attorney who specializes in foreign
trade-mark registration and protection, and be guided by his advice.
Classification of Merchandise
The right to use a trade-mark is limited to the class of merchandise
for which it is registered, and to the goods, falling within that
class, on which it has been actually used.
For the purpose of classification the Patent Office has issued a list
of forty-nine general classes of merchandise. An applicant for the
registration of a trade-mark must specify the class of merchandise with
which his mark has been used, and must describe the particular goods
in that class on which it has been used. In case his application is
granted, his right to use the trade-mark is confined to the line of
products named in his application.
The list follows:
1. Raw or partly prepared materials.
2. Receptacles.
3. Baggage, horse equipments, portfolios, and pocket-books.
4. Abrasive, detergent, and polishing materials.
5. Adhesives.
6. Chemicals, medicines, and pharmaceutical preparations.
7. Cordage.
8. Smokers' articles, not including tobacco products.
9. Explosives, firearms, equipments, and projectiles.
10. Fertilizers.
11. Inks and inking materials.
12. Construction materials.
13. Hardware and plumbing and steam-fitting supplies.
14. Metals and metal castings and forgings.
15. Oils and greases.
16. Paints and painters' materials.
17. Tobacco products.
19. Vehicles, not including engines.
20. Linoleum and oiled cloth.
21. Electrical apparatus, machines, and supplies.
22. Games, toys, and sporting goods.
23. Cutlery, machinery, and tools, and parts thereof.
24. Laundry appliances and machines.
25. Locks and safes.
26. Measuring and scientific appliances.
27. Horological instruments.
28. Jewelry and precious-metal ware.
29. Brooms, brushes, and dusters.
30. Crockery, earthenware, and porcelain.
31. Filters and refrigerators.
32. Furniture and upholstery.
33. Glassware.
34. Heating, lighting, and ventilating apparatus, not including
electrical apparatus.
35. Belting, hose, machinery packing, and non-metallic tires.
36. Musical instruments and supplies.
37. Paper and stationery.
38. Prints and publications.
39. Clothing.
40. Fancy goods, furnishings, and notions.
41. Canes, parasols, and umbrellas.
42. Knitted, netted, and textile fabrics.
43. Thread and yarn.
44. Dental, medical, and surgical appliances.
45. Beverages, non-alcoholic.
46. Foods and ingredients of foods.
47. Wines.
48. Malt extracts and liquors.
49. Distilled alcoholic liquors.
50. Merchandise not otherwise classified.
(Note: Class 18 was abolished Feb. 24, 1909.)
As a result of this feature of the law products in various
non-competitive lines sometimes bear the same names. There is, for
example, a Yale[2] lock and a Yale motorcycle, an Ideal hairbrush and
an Ideal fountain pen, a Packard piano and a Packard automobile, a
Skidoo soap and a Skidoo Marine engine.
State Trade-Mark Laws
Most states have some kind of a trade-mark law, many of them good ones,
and about a dozen have strong penal codes covering the subject, under
the term of counterfeiting, while others are able to do what the United
States courts cannot do--actually mete out imprisonment to those who
infringe. Pennsylvania's law in this respect is particularly thorough.
The Federal statutes concerning trade-marks apply to the entire
country. Few large concerns doing a national business register in
the states. Most of them go to the Patent Office and secure national
registration.
There is nothing in any of the state laws which make it safer to
register by states, since California's obnoxious law has been repealed,
but in some cases, where persistent infringers are at work, owners of
trade-marks secure state registration as an extra precaution.
FOOTNOTES:
[1] "The verification required by this section may be made before
any person within the United States authorized by law to administer
oaths, or when the applicant resides in a foreign country, before
any minister, chargé d'affaires, consul, or commercial agent holding
commission under the government of the United States, or before any
notary public, judge, or magistrate having an official seal and
authorized to administer oaths in the foreign country in which the
applicant may be, whose authority shall be proved by a certificate of a
diplomatic or consular officer of the United States."--(_Extract from
Section 2, Act of 1905._)
[2] The name Yale, or any similar name, can be registered as a
trade-mark only when the applicant can take advantage of the ten
years' clause. The word "Yale" as applied to hosiery has been refused
registration on the ground that it is a geographical term.
CHAPTER II
Essentials of a Valid Trade-Mark
To a layman the trade-mark law seems, at first consideration, to be a
crystallized system of arbitrary rules without a fundamental underlying
principle.
A study of its application will show that this is a mistaken view of
the case. As a matter of fact, the law is excellently framed, and is
based on a broad principle which draws a just line of cleavage between
the rights of an individual and his encroachment upon the rights of
others.
[Illustration:
TRADE MARK
Thomas A Edison
_An illustrious and valuable trade-mark._
]
In the practical workings of a law which deals with commercial
activities in their most highly developed phase, in a sphere where the
ingenuity of men is on fertile ground, in cases where the weight of a
hair would make the difference between yea and nay, it is inevitable
that many fine distinctions must be drawn.
The courts, by contradictory decisions, have here and there brought
confusion into the practice of the Patent Office, as applied to
trade-mark procedure, but, on the whole, the judicial interpretation of
the law has been fairly uniform and consistent.
It should be mentioned here, for the reader's information, that the
attitude of the Patent Office toward applications for the registration
of trade-marks has been criticized, on various occasions, by some
of those who have had dealings with it. Its rulings have been
characterized as narrow and illiberal, especially in the matter of
trade-marks alleged to be descriptive in their nature.
In the preceding chapter we laid down briefly the requisites of a valid
trade-mark. We shall now discuss these requirements more fully, using
specific and generally well-known examples of trade-marks to illustrate
our meaning.
A Portrait of a Living Individual Cannot be Registered as a Trade-Mark
Unless by Consent of the Individual Whose Portrait is Used, or, if a
Minor, by Consent of his Legal Guardian
This section of the law is based on the recognized right of any
person to prohibit the unauthorized reproduction of his portrait
for any advertising purpose. In some of the states--New York, for
example--there are state laws specifically forbidding such unauthorized
reproduction.
[Illustration: _Registered as a trade-mark by the Saturday Evening
Post._]
While the law prohibits the registration of a living individual's
portrait as a trade-mark, without that person's consent, it is
allowable to use the portrait of a historical character.
The trade-mark of the Robert Burns Cigar is a picture of the poet
Burns, with his facsimile signature.
Pictures of Franklin, Napoleon, Henry Clay, Bismarck, and many
other famous men are used as trade-marks. A cereal recently placed
on the market under the name of "Washington Crisps" carries George
Washington's portrait on the package.
Benjamin Franklin's face is registered as a trade-mark by the Curtis
Publishing Company, and is printed in this connection on the editorial
page of the Saturday Evening Post.
[Illustration:
MENNEN'S BORATED TALCUM
TRADE MARK
_This face has been printed more times than any other portrait ever
used in advertising._
]
A celebrated instance of a face used as a trade-mark is shown in the
picture of Gerhard Mennen on this page. Mennen's Talcum Powder was
produced by Gerhard Mennen, who had his own picture put on each package
as an identification to the purchaser. After years of use, his portrait
was formally registered in the Patent Office.
Another famous face is that of W. L. Douglas, shoe manufacturer and
Ex-Governor of Massachusetts.
A very effective trade-mark is a combination of Thomas A. Edison's
portrait and signature, used with the Edison Phonograph. Edison is
known by reputation to every American, and his picture and signature
used in connection with a mechanical device, give it the stamp of high
excellence. Imagine how much more difficult the selling effort of the
Edison Phonograph Company would have been if they had called their
instrument The Voltex Phonograph, for example, or some similar name.
Everybody has seen the Woodbury face, which is identified with
Woodbury's Facial Soap, and other preparations of the Andrew Jergens
Company of Cincinnati. This is a very valuable trade-mark, on account
of the extensive advertising, running through many years, that has
been given it. One of the striking features of this trade-mark is that
the head seems to be neatly decapitated just under the chin. This odd
appearance makes the memory of this picture stick in the reader's mind
longer than any ordinary portrayal of a human face.
A Valid Trade-Mark Cannot Be any Arrangement of Words or Devices
Descriptive of the Goods with which They are Used, or of the Character
or Quality of the Goods
The intent of the law here is to prevent the individual appropriation
of general terms descriptive of a class of goods. If it were allowable
to register and protect such phrases as "The Best Soap in the World",
applied to a certain brand of soap, for instance, it is easy to see
that all desirable superlatives and descriptive words would soon be
appropriated, to the detriment of other concerns in the same line of
trade. Therefore, the law makes strict provision that a trade-mark
shall not be descriptive in any sense.
Though this is the intent of the law, in its working out the line seems
to be finely drawn in some cases.
"Royal" has been held to be a valid trade-mark for a baking powder on
the ground that it has been long used as the name of the total output
of a factory, and that it has become to the public mind a designation
of origin. It seems difficult for a layman to reconcile this decision
with that of another court, which held that "Royal" is not a valid
trade-mark for flour, as it indicates "quality and is incapable of
exclusive appropriation."
The word "Ideal" is held to be a valid trade-mark for a fountain pen,
its use in this connection being fanciful and not descriptive.
The word "Naphtha", used as a name for a soap with naphtha as an
ingredient, was held to be descriptive, and therefore not registrable
as a trade-mark, to the exclusion of the goods of other manufacturers,
although the owners, Fels & Company, of Philadelphia, had advertised it
extensively throughout a considerable period of time.
"Fitmeeasy", as applied to corsets, was considered descriptive.
"Maltha" was refused registration for a brand of paving asphalt. It
appears that "Maltha" means liquid asphalt and is in general use in the
trade with that meaning.
"Elastic Seam", a name used to designate drawers having an elastic seam
at the side, is purely descriptive, and was so considered by the court
in the case of _Scriven v North_.
On the other hand, the word "Elastic", when applied to bookcases, is
held to be a fanciful word, not descriptive, and is a valid trade-mark.
Application was made by a brewer for the registration of the word
"Star", accompanied by a picture of a six-pointed star, as a trade-mark
for beer. Opposition by another brewer was filed, and it was shown that
both the word "Star" and the symbol had been used for ages in Germany,
the home of beer, as a general sign of the brewing business, in the
same sense that a striped pole denotes a barber. It was claimed, and
the claim was judicially sustained, that both the word "Star" and its
symbol are indicative of the brewing business in general and, as such,
are common to the trade, and cannot therefore be considered valid
trade-marks for beer.
[Illustration:
THE ATLAS PORTLAND CEMENT CO
PORTLAND
ATLAS
CEMENT
30 BROAD ST. NEW YORK
LEHIGH PORTLAND CEMENT COMPANY
LEHIGH
PORTLAND
-WORKS-
ORMROD LEHIGH CO
PENNA.
CEMENT
ALLENTOWN, PA.
· ALPHA · PORTLAND · CEMENT · COMPANY ·
ALPHA
PORTLAND
GENERAL OFFICE
EASTON.
PENNA
CEMENT
· MANUFACTURERS ·
_Some Portland Cement Trade-Marks._
]
A flour manufacturer conceived the idea of selling his product in
barrels made by staves of alternately light and dark wood--striped
barrels, in fact. He then desired registration for a trade-mark which
consisted of a pictorial representation of this form of barrel. It was
held that this mark was not registrable, as it was descriptive of the
barrel.
"Better than Mother's" Mince Meat was held to be invalid as a
trade-mark, as it is obviously indicative of quality.
[Illustration:
"COLUMBUS"
SANDUR
SANITARY--DURABLE
PATENTED
_A complicated and involved trade-mark._
]
A descriptive word in a foreign language cannot be exclusively,
appropriated as a trade-mark. The word "Matzoon" in Armenian means
"fermented milk". It was held, in the case of _Dadirrian v Yacubian_
that this word, applied to a preparation of fermented milk, was not a
valid trade-mark.
Arbitrary symbols, numbers or words in common use in any line of trade
to designate grades, or varieties, of products, are held to have
become descriptive by usage. "Lake", "Cylinder", and "New York" are
trade names used to indicate qualities of glass. They were refused
registration on the ground that they were descriptive appellatives.
Note that one of the names, "New York", would have been considered
invalid on the ground of being a geographical term.
"A No. 1", "A X No. 1" and "No. 1", used by a plow manufacturer to
indicate size and shape of plows, were considered descriptive terms,
and, therefore, not valid trade-marks.
While descriptive numbers cannot be registered as trade-marks, it is
permitted to register numbers that are used as arbitrary symbols. A
celebrated instance of a number used as a trade-mark is "4711" used
to designate a line of toilet articles. When the manufacture of the
famous "4711" Perfume began, the owner's place of business was at 4711
Glockengasse, in Cologne. The street number "4711" was placed on the
label, and it is to-day one of the oldest trade-marks in existence,
having been used for about one hundred and twenty-five years. The house
at 4711 Glockengasse has long since disappeared, and "4711" is now only
an arbitrary symbol.
A manufacturer of hooks and eyes applied for registration of the phrase
"Rust? Never!" as a trade-mark. Registration was refused, as the mark
was held to be descriptive, indicating that the hooks and eyes would
never rust.
+-----------------------------------------------------------------+
| =The= |
| =J. W. T.= |
| =Advertising= |
| =Service= |
| |
| An advertising agency's claim to an advertiser's |
| consideration must be based on the service that it |
| gives. |
| |
| Service consists of:-- |
| |
| 1st. Information as to advertising mediums, their circulations, |
| rates and qualities. |
| |
| 2nd. Advice resting on actual experience. |
| |
| 3rd. Knowledge of commodities, their composition, |
| prices and methods of sale. |
| |
| 4th. Knowledge of merchandising conditions. |
| |
| 5th. Knowledge of the buying public, its needs, its habits |
| and its income. |
| |
| 6th. The ability to plan advertising campaigns--that is, |
| to grasp the whole subject and work out its details |
| in conformity with a general principle. |
| |
| 7th. Knowledge of trade-marks, their use in advertising, |
| and methods of protecting them from infringement. |
| |
| 8th. The ability to write advertising that will create a |
| desire for the advertised product. |
| |
| 9th. The artistic ability to make advertising attractive. |
| |
| The service of the J. Walter Thompson Company |
| covers all these functions of an advertising agency. |
| |
| We have had a continuous experience of forty-six |
| years in planning and carrying out advertising campaigns. |
| |
| We have reached the stage of development where |
| we know advertising as a swimmer knows the water. |
| |
| Doesn't it seem good business to entrust your advertising |
| to an agency that really knows? |
| |
| =J. WALTER THOMPSON COMPANY= |
| |
| =New York: 44 East 23rd Street= |
| =Boston: 201 Devonshire Street= |
| =Cincinnati: First National Bank Bldg.= |
| =St. Louis: Odd Fellows Bldg.= |
| =Chicago: The Rookery= |
| =Cleveland: Swetland Bldg.= |
| =Detroit: Trussed Concrete Bldg.= |
| =Toronto: Lumsden Bldg.= |
| =London: 33 Bedford St., Strand= |
+-----------------------------------------------------------------+
It should be noted that there are valid trade-marks that seem to be
descriptive, and which no doubt convey to the purchaser the suggestion
of quality, but which are not really descriptive, but merely
suggestive. An example of this is "Hydegrade" as applied to fabrics.
This word is a combination of "Hyde" (the name of the proprietor) and
"Grade". The word, by virtue of its sound, brings to the mind the idea
of "high-grade"--a very fortuitous circumstance, doubtless, in the
opinion of the owners.
[Illustration:
Brenlin
_Affixed by using perforated letters. Trade-mark appears on every
yard of Brenlin window shades._
]
Names, descriptive in their nature, and therefore not registrable under
the Act of 1905, may, nevertheless, be protected by the law of unfair
competition, if the circumstances are such as clearly to indicate that
a new user of the name has adopted it for the purpose of trading upon
the reputation of an older or more widely known concern.
A Trade-Mark Must Not Misrepresent the Quality, Composition, Character,
or Origin of the Product
A fraud cannot be legalized, and a misrepresentation of any kind, made
by a trade-mark, renders it invalid.
"Syrup of Figs" was held to be invalid as a trade-mark, and not
protectable, in a case where the product was shown to have only a trace
of fig syrup.
The title "American Sardines", applied to fish which were not sardines,
was considered a misrepresentation, and was refused registration.
(Note: Even if not a misrepresentation, it would be considered
invalid, as it is descriptive.)
In the case of _Wrisley v Iowa Soap Company_, it was held that the name
"Old Country Soap" used on soap and advertised in such a way as to
lead people to believe that it was made in Europe, was deceptive and
protection to the name could not be given.
[Illustration:
B
_A trade-mark that may be considered good or bad, depending on the
way you look at it._
]
An interesting case is that of _Memphis Keeley Institute v Leslie E.
Keeley Co._ (144 Fed. R. 628; 155 id. 964).
The Memphis Keeley Institute made a contract with the Leslie E. Keeley
Company to represent the Keeley Company in Tennessee in treating
inebriates. The Keeley Company agreed to sell the Keeley Cure to no one
in Tennessee except through the Memphis Institute.
After a while the Keeley Company claimed that the Memphis Institute had
violated its contract, and refused to furnish any more of the treatment
to the Memphis concern.
The Memphis Institute continued to advertise itself as the
representative of the Keeley Company, and to assert that its treatment
was that of the Keeley Company.
[Illustration:
"STEERO"
_A coined word used as a trade-mark._
]
Suit being brought, the Memphis Institute alleged that the
complainant's representations of the ingredients of its remedies were
untrue and misleading. The Keeley Company had extensively advertised
its treatment as the "Gold Cure". It was shown in court that it
contained no gold in any form; that in the beginning chloride of
gold had been used in one instance, and that it had almost killed
the patient; and that special bottles of the cure had been prepared
with gold in them in order that a chemist might be deceived; and that
this chemist's analysis of the spurious bottles had been extensively
advertised as showing that gold was in the remedy.
[Illustration:
ARLINGTON MILLS
SKILL WINS FAVOR
_A simple and effective trade-mark._
]
On the evidence of these misrepresentations, the Court of Appeals
reversed the decision of the lower court, and dismissed the complaint.
The doctrine of law that misrepresentation is a bar to protection of
a trade-mark or a trade-name has been clearly established by many
decisions similar to the above.
A Trade-Mark Must Not Be Similar to a Trade-Mark previously Registered
for the same Class of Merchandise
When a pictorial or symbolic device has been registered, registration
is refused to any other mark, for the same class of merchandise,
composed of words describing the pictorial or symbolic device already
registered. Or, _vice versa_, if the wording has been registered
first, a symbol with the same meaning will be denied registration. For
example:--
A trade-mark consisting of the conventional representation of a fox,
unaccompanied by lettering, would not be a valid trade-mark if the word
"Fox" had already been registered for the same class of merchandise. In
either case the goods would be called the "Fox" brand.
The practice is to refuse registration of a mark in cases where,
although there may be no literal similarity, there is a similarity in
ideas.
"Edelweiss-Maltine" was refused registration on the ground that it
conflicted with "Maltine", a trade-mark already registered for goods of
the same description.
"Certosa" was refused registration as a trade-mark for flour on account
of its similarity to the word "Ceresota" already registered.
The Patent Office has held that in an interference between two
trade-marks, one consisting of the pictorial representation of a
bouquet of flowers, and the other consisting of the word "Bouquet",
applied to the same class of goods, that the marks were identical in
meaning.
"Nassac" having been registered as a trade-mark, the word "Nayassett"
was refused registration on the ground of similarity. Thereupon, the
owner of the "Nayassett" mark obtained the consent of the owners of
"Nassac" to the registration of "Nayassett". This did not alter the
case, in the opinion of the Commissioner of Patents, who held that the
law was mandatory, and was not affected by agreement among the owners
of conflicting marks.
In the case of _McLean Co. v Adams Co._ (136 Official Gazette, 440) it
was held that there was no conflict between "Victoria" and "Victor", a
mark already registered for the same class of merchandise. A picture
of Queen Victoria's head was shown on a medallion, associated with the
word "Victoria". The "Victor" trade-mark consisted of the words "The
Victor" with a device showing a knight on horseback. As the similarity
between the marks was obviously slight and superficial, and was
outweighed by the dissimilar features, it was held that the "Victoria"
trade-mark was entitled to registration.
It was held that there was no conflict between two trade-marks
for stove polish, one consisting of the word "Raven" with the
representation of a raven sitting on a limb of a tree, and the other
consisting of the word "Crow" associated with a picture of a crow, also
perched on a limb, but in a different position.
In case of conflicting marks the test of similarity is whether
the marks are sufficiently alike in sound or in appearance, or in
intention, to mislead the purchaser.
A Trade-Mark May Not Be a Geographical Name or Term
The object of this provision of the law is to prohibit the
appropriation of the name of a place by an individual to the detriment
of other manufacturers in the same locality, as well as to prevent a
misrepresentation of the place of origin of a trade-marked article.
This restriction does not apply to geographical names used in an
arbitrary or fanciful sense.
[Illustration:
NAME
DUPONT
ON EVERY BRUSH
_This shows how the reader's attention is called to the Dupont brush
trade-mark in advertisements._
]
The Fleischman Company, well-known bakers of New York, bake and sell a
Vienna Bread. The term "Vienna" used in this connection was held, in a
test case, to be a valid trade-mark, although it is a geographical name.
In the decision bearing on the Vienna trade-mark for bread, the Court
said: "As a mark for bread it is purely arbitrary, and is in no manner
descriptive of the ingredients or the quality of the article. No
deception is practised, because the place of its manufacture is given,
and it is known that bread cannot be imported from abroad for use here."
"Durham", a name applied to tobacco, has been judicially held not to
be a valid trade-mark against another manufacturer located in the
town of Durham. While any tobacco manufacturer in Durham has a right
to call his tobacco "Durham Tobacco", he cannot imitate the label of
the original Durham tobacco, or use the advertising symbol of a bull,
without being liable to injunction and a suit under the law of unfair
competition.
"French", applied to paints, was considered a geographical name,
and not valid as a trade-mark. "French Tissue"--the name of a
court-plaster--was considered invalid, the first word being a
geographical term and the second a descriptive word.
The word "Celtic", however, has been considered valid as a trade-mark
for tea. The Commissioner of Patents, before whom the case went on an
appeal, decided that while "Grecian", "Roman" and "Oriental" had been
held to be geographical, as each of these terms refers to a certain
section of the globe, the word "Celtic" is not. There seems to be no
authority to sustain the popular opinion that "Celtic" refers only to
Ireland. The dictionary defines "Celtic" as "pertaining to the Celts",
of whom the Irish are only a branch. It has never been applied to any
specific locality.
"Yucatan" applied to leather; "Manhattan" as the name of
sewing-machines; and "Pittsburgh" as a trade-mark on pumps, have all
been held to be geographical, and therefore invalid.
In a recent decision of the Supreme Court, the exclusive right of the
Carthusian monks to use their well-known trade-mark for their Liqueur
Chartreuse, was upheld. This right was attacked on the ground that
Chartreuse is a geographical name, the liqueur having been made at a
monastery called for many centuries "La Grande Chartreuse".
In his opinion Mr. Justice Hughes said:
"If it be assumed that the monks took their name from the region
in France in which they settled in the eleventh century, it still
remains true that it became peculiarly their designation. And the
word 'Chartreuse', as applied to the liqueur, which for generations
they made and sold, cannot be regarded in a proper sense as a
geographical name. It had exclusive reference to the fact that it
was the liqueur made by the Carthusian monks at their monastery.
So far as it embraced the notion of place, the description was not
of district, but of the monastery of the order--the abode of the
monks--and the term, in its entirety, pointed to production by the
monks."
While a geographical name may be upheld as a valid trade-mark, under
exceptional conditions--as shown in the Fleischman case--the safe
plan to follow is to avoid names of this character when selecting a
trade-mark.
Under the collection of legal precedents constituting the law of unfair
trade, the owner of a geographical trade-mark may successfully defend
his right to its exclusive use if he has acquired such a reputation
under it that it has grown to be, in the public mind, an arbitrary
designation of his goods.
The American Waltham Watch Company, manufacturing watches at Waltham,
Massachusetts, has legally prevented other manufacturers in Waltham
from calling their product "Waltham" watches unless the name is used
with some accompanying statement which clearly distinguishes these
watches from the original Waltham watch.
There is an Elgin Watch, a Kalamazoo Stove and a Bristol Fishing-Rod,
to single out a few examples of geographical terms used as trade-marks.
The exclusive use of these trade-marks by the makers of the well-known
articles which they represent can no doubt be legally sustained on the
ground that these names have become arbitrarily identified, through
years of use and extensive distribution, with the articles to which
they are applied, and that their indiscriminate use would cause
confusion in the public mind and loss to the original owners.
Their security as trade-marks rests, not upon the letter of the
trade-mark act, but upon the law of unfair trade.
A Trade-Mark Must Not Consist of the Insignia of the American National
Red Cross
The Act of 1905 (the trade-mark statute) is silent on the subject
of the Red Cross as a trade-mark. Its use as a trade-mark, or as an
advertisement, or in trade in any form, is prohibited by the act
incorporating the American National Red Cross, approved January 5,
1905. An extract from this act, bearing on this subject, is quoted here:
"Nor shall it be lawful for any person or corporation, other than the
Red Cross of America, not now lawfully entitled to use the sign of
the Red Cross, hereafter to use such sign or any insignia colored in
imitation thereof for the purposes of trade, or as an advertisement
to induce the sale of any article whatsoever. If any person violates
the provisions of this section, he shall be guilty of a misdemeanor
and shall be liable to a fine of not less than one nor more than five
hundred dollars, or imprisonment for a term not exceeding one year,
or both, for each and every offense. The fine so collected shall be
paid to the American National Red Cross."
In the Official Gazette there is reported the case of an applicant
who applied for registration of a label for cough syrup, containing
the emblem of the Red Cross and the words "Red Cross". This label
having been refused registration, the applicant submitted it in an
amended form with the Red Cross emblem left out, but with the wording
left intact. It was contended by him that the Act of January 5, 1905,
prohibited only the use of the "sign of the Red Cross", and that by
implication the words "Red Cross" should be considered registrable.
This contention of the applicant was held by the Commissioner to be an
attempt to evade the spirit of the law, and registration was refused.
A trade-mark containing the Red Cross emblem does not fall within the
prohibition expressed in the statute if it has been in exclusive use by
the applicant for ten years prior to 1905.
A Trade-Mark Must Not Be Merely the Name of an Individual, Firm,
Corporation, or Association unless said Name is Written, Printed,
Impressed or Woven, in some Particular or Distinctive Manner, or is
Used in Connection with the Portrait of the Individual
A surname cannot be the exclusive property of an individual, because
there may be other persons who have an equal right to use the
same name. A man by the name of Jones may go into the business of
manufacturing cigars, for example, and he may call his product "Jones
Cigars" and, by his industry and ability, create a valuable business.
But any other Jones has a right to manufacture and sell cigars, if he
feels so inclined, and the first Jones cannot prevent it. It is true
that, under the law of unfair trade, he may compel all other Joneses
to mark their cigars in _some distinctive manner_, in order that
purchasers may not be misled into the belief that they are buying the
product of the original Jones, when such is not the case.
This principle is specifically illustrated in the famous Walter Baker
cases, of which a brief resumé is given in another chapter.
An obvious intent of the framers of the Act of 1905 was to discourage
the use of the names of "individuals, firms, corporations and
associations" as trade-marks.
Consequently, it was provided in the act that names of this character
should not be registered unless they were "written, printed, impressed
or woven in some particular or distinctive manner, or used in
connection with the portrait of the individual."
The ruling of the Patent Office, which has been sustained by the
courts, is that the particular or distinctive manner of presenting the
name must exhibit a peculiarity so pronounced that it dominates the
name, and throws it into relatively secondary importance. In other
words, a trade-mark of this character, to be registrable, must possess
more of the quality of a device than of a name.
It is conceded that an autograph signature, like "Wilcox's", shown on
this page, is entitled to registration.
Soon after the law went into effect a curious tangle developed in the
application of this feature of the act.
It was found that the Patent Office--and its stand was upheld by the
Court of Appeals of the District of Columbia--would not sanction the
registration of a name possessing all the technical requisites of a
valid trade-mark if it happened to be the name of the applicant, unless
it was written or printed in some particular and distinctive form.
[Illustration:
Wilcox's
TRADE MARK REGISTERED
_Written in a "particular and distinctive manner" within the meaning
of the law._
]
To a legal mind there may have been some good reason for this attitude
of the court, but a layman of ordinary common sense can find nothing
in the statute that would justify a refusal to register a trade-mark,
valid in other respects, merely because it happened to be the name of
the person, corporation, or firm making the application.
The name "Success", a valid mark in every essential respect, was
refused registration as a trade-mark for Success Magazine, because it
formed part of the name of the applicant, The Success Magazine Company.
The ruling of the court left the implication that if Success Magazine
had been published by John Brown & Co., or by any other concern other
than the Success Magazine Company, registration would have been
granted. It was held that a registration of the name "Success" would
be a violation of that provision of the law providing that a mark
consisting merely of the name of the applicant could not be registered.
The word "Champion", as a trade-mark for locks, was rejected by the
Patent Office on the ground that it formed part of the name of the
Champion Safety Lock Company. The word "Champion" is arbitrary and
fanciful, and could no doubt have been registered by any other firm
than the Champion Safety Lock Company.
Many other similar cases developed during the first six years of the
law's application. This situation led to the passage on February 8,
1911, of the following amendment of this section of the Act of 1905:
"_Provided_, further that nothing herein shall prevent the
registration of a trade-mark otherwise registrable because of its
being the name of the applicant or a portion thereof."
It is now practicable to register the name of any individual,
firm, corporation or association--even if it is the name of the
applicant--provided it is "written, printed, impressed or woven, in
some particular or distinctive manner."
[Illustration:
Stewart Hartshorn
_This name turns up when the time comes to hang the window shades._
]
A familiar example of the name of an individual used as a trade-mark is
to be found on every Hartshorn shade roller, where the name "Stewart
Hartshorn", written as an autograph signature, has been used for many
years. The name "Huyler's", applied to confectionery, is another case
of the same kind.
The name "John Wanamaker" has, by long usage in connection with a
highly successful mercantile business, become the most valuable
trade-mark in the department store world.
"Stewart Hartshorn", "Huyler's", and "John Wanamaker" are all common
law marks, fully protected by the law of unfair trade.
A Trade-Mark Must Not Be any Design or Picture Adopted by a Fraternal
Society as its Emblem
The intent of the law is to prohibit any individual from trading on the
reputation of a fraternal order.
Registration was refused for the phrase "Knights of Labor" as a
trade-mark on whiskey.
A Trade-Mark Must Not Consist of, or Comprise, the Flag or Coat of Arms
or other Insignia of the United States, or any Simulation thereof, or
of any State, or Municipality, or of any Foreign Nation
It has been decided in one case where an application was made to
register the coat of arms of Maryland, that it could not be registered
even under the ten years' clause.
Simulations of the coat of arms of the United States, or of the United
States flag, have been denied registration.
The U. S. Sanitary Manufacturing Co. was refused registration for a
trade-mark consisting of the letters "U. S." with a background of a
shield similar to that of the conventional United States shield.
In the case of Popoff Frères, importers, registration of a mark
including the Russian coat of arms was refused, although proof was
shown that the Russian government had authorized the applicants to use
this coat of arms as their trade-mark. The Commissioner held that the
law could not be set aside by agreement.
The reader is doubtless familiar with the trade-mark of the United
Cigar Stores--a shield consisting of a background at the top with the
word "Cigars" on it, with the word "United" forming the lower part of
the design. The vertical lines form seven heavy strokes, corresponding
to the seven red stripes in the American flag. This design is
suggestive of the United States coat of arms, but it is so cleverly
worked out that it does not come within the prohibition expressed in
the law. Suggestive as this design is of the American shield, this
feature is secondary, after all, for the design is dominated by the
lettering "United" and "Cigars."
A Trade-Mark Must Not Be a Form, a Color, a Shape, or a Material
It is clear that a trade-mark must be a "mark"--not a box, or an
envelope, or container of any kind. In a case where it was sought to
register a drum-shaped box used to contain "Drum Collars", it was held
that, "if such claims were allowed, the forms and materials of packages
to contain articles and merchandise would be rapidly taken up, and
appropriated by dealers, until some one bolder than the others, might
go to the very root of things, and claim the primitive brown paper and
tow strings."
A product itself cannot be registered as a trade-mark, for the "mark"
must be different and separate from the thing marked.
[Illustration:
No. 4711
_One of the oldest trade-marks in existence. Used for generations as
a trade-mark of Johann Maria Farina toilet preparations._
]
It would be unfair to give an exclusive right to use any particular
color to an individual, consequently a color is not a valid trade-mark.
A seed-grower, selling his product in bags, applied for registration of
a red bag as a trade-mark, but registration was refused.
A fountain pen manufacturer was refused registration for a trade-mark
for fountain pens, consisting of a red feed bar contrasted with a black
reservoir of hard rubber. The applicant stated that the feed bar was
colored red in the manufacturing process, and that it was composed
of rubber made by a special formula. The Court of Appeals held that
registration of this device would give the applicant a virtual monopoly
of this feature.
The Underwood Typewriter Co. applied for registration of the face-plate
of their machine as a trade-mark. It is a principle of the trade-mark
law that a part of a machine, or the form of an article, cannot be
a valid trade-mark. Reporting this case, the Bulletin of the United
States Trade-mark Association for January, 1908, says:
"The applicant, in the instance under adjudication, sought to
avoid this principle of law, by contending that the case did not
fall within that doctrine, for the reason that the plate which he
sought to register was not really a part of the machine, since it
could be removed without changing the shape of the machine, or
interfering with its operation, or altering its structure. It was
held, however, that while the plate performed none of the mechanical
functions of the machine it was nevertheless a part of the machine
as actually constructed, and was as essential as the frame itself
to the production of a commercial article. It was necessary to give
a finished appearance to the machine, which would not be salable
without it. To recognize the applicant's right to a trade-mark in
that feature of the machine, would enable the applicant to prevent
the manufacture of its machines as constructed to-day, after all the
patents covering it had expired, since no salable machine could be
produced without infringing the trade-mark."
Trade-Marks Are Not Registrable if against Public Policy
The common good takes precedence of the rights of individuals. This is
a principle of equity which has run through the fabric of Anglo-Saxon
law for a thousand years. We find it developed into diverse and widely
separated forms. On one hand, it appears as the right of eminent
domain; in another form we find it appearing in a law prohibiting the
use of the national flag for advertising purposes.
This principle is observed by the Patent Office and the courts in
dealing with questions relating to trade-marks.
A trade-mark, otherwise registrable, and consisting of a device or
wording not prohibited by the statute, may be refused registration if
opposed to public policy.
The application of the _Banner Cigar Mfg. Co._ (138 Official Gazette,
528) for registration of the portrait and facsimile signature of
the late Ex-President Grover Cleveland as a trade-mark was refused,
the Commissioner of Patents holding that the use of a trade-mark of
this character would detract from the dignity of the high office of
President.
The portrait and facsimile signature of Thomas Jefferson was refused
registration on the same grounds.
It should be noted that there is no law to prevent any manufacturer
desirous of using the name and portrait of an Ex-President (not living)
as a trade-mark if he cares to do so, but _he cannot register such a
trade-mark_, and his ability to protect it in the courts in case of
infringement is conjectural.
The word "Copyright", the name of a brand of flour, was refused
registration on the ground that its registration would be opposed to
public policy, since its use in connection with the phrase "Registered
in the United States Patent Office" would be likely to impress buyers
with the idea that the flour had been approved officially. It was also
stated by the Commissioner, before whom the application went on appeal,
that its registration might be used to annoy other flour manufacturers,
who are obliged by law to give notice of copyright on their labels, by
using the word "Copyright" with the date and name of the owner.
The R. M. Rose Company was refused registration for the words "Ask the
Revenue Officer" as a trade-mark for whiskey. The objection is that
this trade-mark might lead purchasers to believe that the quality of
the whiskey thus branded has the approval of the government.
For the same reason the word "Government" was refused registration as a
trade-mark for loose-leaf binders.
Affixation
A trade-mark that is not affixed to the goods for which it is
registered cannot be protected in the courts.
_A mark, or design, or name, that is used only in advertising is not
a trade-mark but an advertising symbol._ Affixation is an essential
requisite of validity in trade-marks.
[Illustration:
SIMMONS
TRADE MARK
CHAINS AND FOBS
_The trade-mark word "Simmons" is affixed on chains by stamping it in
minute letters on the swivel of the chain._
]
The trade-mark may be written, or printed, or pasted, or stenciled, or
branded, or woven, or sewed, upon the article with which it is used.
When it is not feasible to affix it to the article itself, as in case
of liquids and many other commodities, the trade-mark must be affixed
to the container.
Many ingenious devices are used by manufacturers in affixing
trade-marks. The trade-mark "Brenlin", on Brenlin window shades, is
placed upon every yard of the fabric in small perforated letters. The
name appears near the selvage on each side of the goods.
The name "Aurora", applied to portieres and similar hangings, is to
be found woven in the pattern of the fabric near the ends of each
piece. The trade-mark blends into the pattern in such a way that it is
inconspicuous, but may be readily found upon looking for it.
The London Feather Company's "London Plumes" trade-mark is cleverly
affixed, being in the shape of a diminutive celluloid label, to the
inside of the stem of each ostrich plume. The label is sewed on in such
a manner that if it is cut out the plume falls apart.
[Illustration:
LOWELL DUCK
_This trade-mark is stenciled on duck sail cloth._
]
Makers of clothing generally affix their trade-marks to each garment
in the shape of a sewed label. Manufacturers of rubber goods, such as
rubber tires, water bags, etc., mold the trade-mark into the article
itself. The "Lowell Duck" trade-mark, used on sail cloth, is stenciled
at regular intervals on the selvage. The Corticelli kitten, which is
the registered trade-mark of Corticelli Spool Silk, appears on the
label at the end of each spool.
Moet & Chandon, and other champagne producers, have adopted the unique
method of affixing their trade-marks to the bottom of the corks of
their bottles. The trade-mark is not seen, of course, until the bottle
has been opened. This method of affixation has been sustained by the
courts. The logic of it is that it prevents an unscrupulous retailer
from washing the label off a bottle of wine and pasting a spurious
label in its place, provided the purchaser knows where to look for the
trade-mark.