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Addyston Pipe and Steel Co. v. United States (175 U. S., 211). In that case the court held:

Interstate commerce consists of intercourse and traffic between the citizens or inhabitants of different States, and includes not only the transportation of persons and property and the navigation of public

waters for that purpose, but also the purchase, sale and exchange of commodities. But upon the matter of interstate and foreign commerce and the proper regulation thereof, the subject being not alone national but international in its character, the great importance of having but one source for the law which regulates that commerce throughout the length and breadth of the land can not in our opinion be overestimated. Each State in that event would have complete jurisdiction over the commerce which was wholly within its own borders, while the jurisdiction of Congress, under the provisions of the Constitution, over interstate commerce would be paramount, and would include therein jurisdiction over contracts of the nature we have been discussing.

The court further said: The power to regulate commerce means the power to prescribe rules by which it shall be governed.

It was also said in the case of Gloucester Ferry Co. v. Pennsylvania (114 U. S., 196):

Commerce among the States consists of intercourse and traffic between their citizens, and includes the transportation of persons and property, and the navigation of public waters for that purpose, as well as the purchase, sale, and exchange of commodities. The power to regulate that commerce as well as commerce with foreign nations vested in Congress is the power to prescribe the rules by which it shall be governed; that is, the conditions upon which it shall be conducted; to determine when it shall be free and when subject to duties and other exactions.

And in Champion v. Ames (188 U. S., 321) it was held that an act of Congress prohibiting the transportation of lottery tickets from one State to another was a regulation of interstate commerce.

We have thus seen that the use of trade-marks bears a very close relationship to commerce; that the trade-mark is only of value where it is attached to a subject of commerce-that is, to goods or merchandise which are to be used in commerce. We have further seen that Congress has the power to regulate—that is, to prescribe the rules which shall govern certain kinds of commerce. We confidently submit that the regulation of a trade-mark comes within the power to prescribe the rules by which commerce shall be governed and controlled. Congress, however, is limited in its regulation of commerce, by the express language of the Constitution, to commerce with foreign nations, among the several States, or with the Indian tribes, and its power over that subject is full, complete, and exclusive.

Having determined that Congress has the constitutional power to enact legislation upon the subject of trade-marks used in the commerce which comes within the jurisdiction of Congress, we now pass to a consideration of the provisions of the bill herewith submitted.


The main objects sought to be accomplished by the bill herewith reported are, first, to make provision for the registration of trademarks used in interstate commerce, as well as those used in foreign commerce, and in commerce with the Indian tribes; second, to provide a procedure which will give uniformity to the laws governing the registration of trade-marks; third, to provide additional penalties for the infringement of a registered trade-mark; fourth, to reduce the fee required on tiling an application for the registration of a trade-mark;

fifth, to regulate the procedure for the registration of a trade-mark governing cases of interfering or conflicting claims to the use of trade-marks; sixth, to make our statutes conform to treaty stipulations entered into between the United States and certain other governments.

The first section of the bill provides for the registration of trademarks used in interstate commeree, as well as in commerce with foreign nations and with Indian tribes, and provides for a reduction of the amount of the fee required for the registration of a trade-mark from $25 to $io.

The second, third, and fourth sections of the proposed bill relate to the procedure for the registration of trade-marks.

As little change as possible throughout the bill has been made in the existing law. Only such changes as were necessary to make the law agree with our treaty obligations, or to accomplish the purposes of the proposed amendments, have been made. The language of the present act has been retained throughout the bill in every case where it was possible to do so.

In the past there has been considerable complaint in regard to what could be registered under the existing law as a trade-mark. Much of the time of the committee in the hearing of the bill has been consumed in a discussion upon this particular feature of the legislation. Section 5 of the proposed bill we believe will permit the registration of all marks which could, under the common law as expounded by the courts, be the subject of a trade-mark and become the exclusive property of the party using the same as his trade-mark.

The language of section 5 is taken almost verbatim from section 5 of the bill proposed by Mr. Arthur P. Greeley, as contained in the report of the Commissioners appointed to revise the statutes relating to patents, trade and other marks, and trade and commercial names, under the act of Congress approved June 4, 1894. Full protection is given by the court, under the doctrine of unfair competition, to the users of such marks as do not, under the common law, constitute technically what is known as a trade-mark, and which can become the subject of exclusive ownership. By other sections of the bill, to which attention will be called later, provision is made for an appeal from the decision of the Commissioner of Patents to the district court of the District of Columbia from a decision refusing the registration of a trade-mark. By these provisions of the bill it would seem that there could not be a conflict of decisions, about which so much complaint has been made in the past. Through the decisions of the courts a uniform system and uniform rules governing and controlling the registration of marks will in time be adopted.

A proviso has been added permitting all marks that have been in actual use as trade-marks for a period of ten years to be registered.

The procedure provided by the bill for the registration of trademarks is similar in many respects to the procedure in patent cases. When the application for registration is filed section 6 provides for an examination of the mark offered for registration. If upon such examination the application is refused, notice is given to the applicant, in order that he may appeal, if he so desires, from the decision. The procedure for appeals is regulated by other sections of the bill. If, on the other hand, the examination discloses that the mark is entitled to registration, then the act provides that the Commissioner shall cause

the mark to be published at least once in the Official Gazette of the Patent Office. Îhe purpose of this publication is apparent. Owners of trade-marks ought not to have their rights to the use of a trademark jeopardized by the registration of similar trade-marks by other parties not entitled to the use of the same. Some notice should be given whereby the true owners of marks may have an opportunity to be heard by the Commissioner of Patents before any mark is registered and given, by reason of such registration, the evidence of ownership provided for by the terms of the bill.

By section 7 provision is made for proceedings in case of notice of opposition to the registration of a mark, and also where an interference exists between a trade mark offered for registration and one already registered or a known trade mark in use.

An appeal is also provided by section 8 from the examiner in charge of trade-marks, or the examiner in charge of interferences, to the Commissioner in person.

A further appeal is provided by section 9 from the decision of the Commissioner of Patents to the court of appeals of the District of Columbia, and the same rules and procedure for such appeals are adopted as those which control appeals from the decision of the Commissioner on an application for a patent or parties to an interference as to an invention.

Section 10 provides for the assignment of trade-marks either before or after registration, but requires that such assignment shall only be valid when made in connection with the good will of the business in which the mark is used and when recorded within three months from the date thereof.

Section 11 is almost identical with section 4 of the act of 1881, except that section 11 of the bill submitted herewith provides that the certificate of registration shall be under the seal of the Patent Office instead of under the seal of the Department of the Interior. The certificates are to be issued by the Commissioner of Patents, who should attach his seal, which is under his control, rather than the seal of the Department of the Interior.

By section 12 of the bill submitted herewith the life of a certificate of registration is changed from thirty years to twenty years. The purpose of this change is to make the term of such registration correspond with the term for which registration is granted by the international union for the registration of trade-marks. The right to the use of a trade-mark is perpetual, so long as the same is actually used in commerce. Such perpetual ownership of a mark is provided for by means of renewals of certificates, upon application made in accordance with the terms of the proposed bill.

By section 13 provision is made for the cancellation of registration of marks wbich may not have been entitled to registration. The only notice which is required, according to the provisions of the bill, of the application for the registration of a trade-mark is the publication of the application once in the Official Gazette. The purpose of this provision is to give to the owner of a mark an opportunity to have a prior registration of his mark, if granted, canceled upon a proper showing:

By sections 14 and 15 provision is made for the payment of fees, and such provisions are taken largely from similar regulations in regard to fees upon applications for a patent.

A remedy at law is given to the owners of trade-marks by section 16. The provision contained in this section to give the court power to enter a judgment on a verdict for three times the amount of the verdict, in such cases as the court may deem it advisable, is new in the law of trade-marks. Similar provisions exist in the copyright and patent laws and in other statutes. The difficulty of proving exact damages in cases of this character is well understood. It has seemed to your committee proper that the Government, which has made provision for the registration of trade-marks, should accord to the owners thereof, who have complied with the terms of the statute, full and complete redress for violation of their rights. By another section of the bill provision is made for designating registered trade-marks by printing under the trade-mark the fact that it is registered, as is done in cases of patents, so that any person who imitates or counterfeits a trade-mark will do so with notice and should therefore be held to a strict accountability for the fraud committed.

Section 17 defines what United States courts shall have jurisdiction of suits involving the rights to registered trade-marks.

Section 18 provides that writs of certiorari may be granted by the Supreme Court of the United States for the review of cases arising under this act, which section is taken from the Federal statute relating to patents.

By section 19 provision is made for proceedings in equity against the infringer of a registered trade-mark. This section corresponds in terms with section 4921 of the Revised Statutes relating to patent cases, except that it specially provides the manner in which profits shall be ascertained. Under existing rules it is necessary for the complainant to prove sales and costs with entire and absolute accuracy. The only persons having knowledge of the cost of making the sales are the defendant or some one in his employ. It has seemed, therefore, only fair and just that if the complainant proves the sales, the defendant should be required to produce evidence of the expenses he was put to in making such sales as an offset against the sales proven by the complainant.

The provisions of section 20 are taken from section 4966 of the Revised Statutes relative to copyrights and are equally applicable, or should be, to trade-marks as to copyrights.

Section 21 is practically the same as section 8 of the present trademark act. The only change in the section as now drawn relates to trade-marks which have been abandoned.

Section 22 provides for the cancellation of certificates of registration which have been granted to applicants who are subsequently found not to be the owners of the marks. This section provides only for the cancellation of trade-marks which are in conflict with other registered trade-marks. Section 13 of the proposed bill provides that any person, whether the owner of any registered trade-mark or not, who may deem himself injured by the registration of a mark, may make application to the Commissioner of Patents to cancel the registration thereof, and proceedings are provided for any such case protecting the rights of the registrant of the mark.

Section 23 is identical with section 10 of the act of 1881 on the subject of trade-marks, and is intended to give the user of a commercial mark, whether such mark comes within the technical definition of a trade-mark under the provisions of the proposed act the right to have

such remedy against those who make use of such mark with fraudulent intent, as is given by the courts under the doctrine of unfair competition, and to further provide that the courts of the United States shall continue to have such jurisdiction as they now have to enforce relief in such cases.

The provisions of section 24 are believed to be self-explanatory.

Section 25 is identical in its provisions with section 9 of the present trade-mark act.

Section 26 is identical in its provisions with section 12 of the present trade-mark act.

The provisions of section 27 are taken substantially from section 11 of the act of Congress approved July 24, 1897, entitled "An act to provide revenue for the Government and to encourage the industries of the United States.” Its provisions have been amended so as to give to manufacturers located in foreign countries—which, by treaty stipulations, give similar privileges to the United States—the same advantages as are given to domestic manufacturers.

Section 28 provides that it shall be the duty of the registrant of a trade-mark to give notice to the public that a trade mark is registered either by affixing thereon the words “Registered in U. S. Patent Office,” or abbreviated thus “Reg. U. S. Pat. Off.” If counterfeiting or imitation of a trade-mark is to subject the counterfeiter or imitator to the penalties by way of trebling of damages provided for under the provisions of the bill submitted herewith, then it seems entirely proper that some notice should be given to the public of the registration of the trade-mark. The provisions for such notice in the section referred to follow the language of the statutes on the subject of patents.

Section 29 defines the terms used in other sections of the bill, and by making such definition of the terms it has prevented considerable repetition in other parts of the bill.

Section 30 simply provides for the repeal of other acts inconsistent with the provisions of the bill submitted herewith and for the preservation of rights acquired by registrants under trade-mark laws now in force.

We have called attention in this report to such provisions of the bill as we thought might require some explanation. The sections in the bill submitted herewith which are not specifically referred to in this report are, we believe, self-explanatory.

It is believed by your committee that the passage of the proposed bill would give the relief which the owners and users of trade-marks are justly asking at the hands of Congress. The subject is one of vital importance to every manufacturer in the United States, as nearly all such manufacturers are engaged in interstate commerce. State laws afford protection for registered trade-marks used in interstate commerce, and with that subject Congress has nothing to do. The existing law, however, affords no protection to manufacturers using trademarks in interstate commerce. Congress alone has power to pass legislation that will protect the use of marks in such commerce.

Your committee is of the opinion that Congress has the constitutional power to legislate upon the subject of trade marks used in interstate commerce, and that the defects in existing law regulating such use of trade marks will be remedied by the passage of the bill.

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